*)* 


UNIVERSITY 

OF  CALIFORNIA 

LOS  ANGELES 


SCHOOL  OF  LAW 
LIBRARY 


OF 


PATENTS    FOE    INVENTIONS 


..  1 
•rormwooDi  *vu  <•>..  vEw-muorr 

L05DOK 


THE     PATENTEE'S     MANUAL 


A    TREATISE 

ON   THE 


LAW  AND  PRACTICE  OF  PATENTS 
FOR  INVENTIONS 


WITH    AN  .APPENDIX    OF 


Statutes,  Hulcs,  mrb  foreign  miit  Colonial  patent  |Tafos 
Ininnaiional  Contention:  anb-  ^protocol 


BY 

JAMES   JOHNSON 
i«» 

OF      THE      MIDDLE      TEMPLE,      BARRISTER -AT  -  LA W 
AND 

J.   HENRY  JOHNSON 

SOLICITOR,    ASSOC.INST.C.E. 
PAST    PRESIDENT    OF   THE    INSTITUTE    OF   PATENT   AGENTS 


SIXTH    EDITION 
REVISED     AND     ENLARGED 


LONDON 

LONGMANS,  GREEN,  &  CO.,  PATERNOSTER  ROW 

STEVENS  &  SONS,  LD.,  119  &  120  CHANCERY  LANE 

1890 


1090 


PBEFACE 


TO 


THE      SIXTH      EDITION 


IN  preparing  the  Sixth  Edition  of  this  Work  for  the  press, 
considerable  changes  have  ,*been  made  both  by  way  of 
enlargement  and  in  the  arrangement  of  the  matter.  The 
provisions  of  three  supplementary  Acts  of  Parliament  and 
of  four  new  sets  of  official  Eules,  now  consolidated  with 
the  previous  Rules,  have  been  noticed,  whilst  numerous 
decisions  of  the  Courts  during  the  last  six  years,  many  of 
which  have  an  important  bearing  on  the  Law  of  Patents, 
have  been  cited.  Several  chapters  have  been  divided  with 
a  view  to  a  fuller  and  more  convenient  treatment  of  the 
subjects,  and  additional  chapters  on  other  branches  of  the 
law  have  been  introduced.  Every  page  has  undergone 
careful  revision,  and  no  pains  have  been  spared  to  render 
the  treatise  one  that  patentees  and  inventors  may  consult 
with  confidence  as  a  trustworthy  exposition  of  that  branch 
of  law  with  which  their  interests  are  most  closely  con- 
cerned. It  may  be  added,  that  although  the  treatise  was 
originally  written  especially  for  their  use,  the  authors  ven- 
ture to  think  that  in  its  enlarged  form  it  may  deserve  the 
notice  of  the  legal  profession,  since  the  large  experience  of 
one  of  them  in  obtaining  Patents,  and  in  the  conduct  of 
litigation  arising  out  of  Patents  for  forty  years,  has  been 
turned  to  account  in  the  production  of  the  volume. 


761210 


ri  PRKFACK  TO    I  III    Hvril 

ReprintH  are  given  of  all  lament  which 

have  any   direct  bearing  <»>   tin-    -n!.j»-rt    <*f   tin-   v. 

as  well  as  of  tin-  Uu!'-,  anil    I-'-. i  jus  issued  by  tin-    Board  of 
Trade  under  the  auth'-rit;  Acts,  of  th-    I  Jules  framed 

I.N  tin  Law  Offio  ^ard  to  proceedings  bef<» 

•  if  the  KuleH  of  tin-  l'n\\  Council  with  r«.'S|H«t  to 
applications  for  the  » 

(treat  additions  to  and  alteration*  in  th. 

:•-  i^n  States  and  British  Colonies  have  been  mad-  <>f 
recent  years.  The  Appendix  containH  summaries  of  tli«  u  !.»!.• 
<>f  thwte  laws  to  date,  re\ised  by  profe«fii<'!iiil  rorreh) 

Tin   \i'|M  inli\  aU«>«  MI  i  tains  a  reprint  of  the  International 
Convention  and  Protocol  relating  to  arrangements  foi 
mutual  protection  of  inciu.strial  property  including  I'n' 

1  MM  \,  i  a  ion  Great  Britain  pivo  her  adhcHion,  and  a 
i-hupt*  r  has  therefore  been  devoted  to  the  subject  in  tin-  Ixxly 
of  tlh  treatise. 

A  copy  of  the  Rules  lately  issued  by  tin  Board  of  Trade 
in  n  hit  ion  to  applications  for  Patents  under  thisG 
\\  ill  also  be  found  in  the  Appendix. 

>us  Iiul.  \  will  IK-  found  of  material  assistance 
liv  those  readers  who  are  in  search  of  any  particular  topic. 


following  summary  of  the  alterations  effected  by  the 
:it  Acts  of  Parliament  may  be  given  here,  //<•/• 
cavtd: — 

The  Act  of  1883  abolished  the  Commissioners  of  Patents, 
who  were  replaced  by  the  Board  of  Trade  as  the  governing 
body  of  the  Patent  Office.  The  Comptroller-General  is  the 
chief  officer  of  the  Board,  and  upon  him  devolves  the  charge 
of  managing  the  business  and  superintending  the  work  of 
tli«  office.  The  Board  was  authorised  to  make  rules,  having 
tli-  ^ame  effect  as  if  forming  part  of  the  Act,  for  regulating 


PREFACE   TO   THE  SIXTH  EDITION  vii 

the  conduct  of  Patent  business  ;  and  it  has  accordingly  pro- 
mulgated a  long  series  of  rules  for  that  purpose  accompanied 
by  forms. 

The  chief  alterations  in  the  procedure  were: — 1.  Non- 
inventors  may  join  with  inventors  in  applying  for  a  Patent. 
2.  The  applications  and  specifications  are  referred  to  offi- 
cial examiners,  who  report  whether  the  documents  are  in 
proper  form  ;  if  they  are  not  in  proper  form,  the  Comp- 
troller may  reject  them  or  require  them  to  be  amended 
before  acceptance,  subject  to  appeal  to  a  Law  Officer.  3. 
Oppositions  to  the  grant  of  Patents  are  decided  by  the 
Comptroller,  subject  to  appeal  to  a  Law  Officer.  4.  The 
steps  necessary  to  be  taken  for  obtaining  a  Patent  are  fewer. 
5.  Applications  and  other  documents  may  be  sent  to  the 
Patent  Office  through  the  post-office.  6.  Patents  are 
sealed  by  the  Comptroller  with  the  seal  of  the  Patent 
Office.  7.  The  Government  fees  are  reduced  from  "251.  for 
a  three  years'  Patent  to  4:1.  for  a  four  years'  Patent,  and 
the  remaining  fees  of  50/.  and  100Z.  are  payable  in 
small  annual  sums.  8.  Applications  for  leave  to  amend 
specifications  are  decided  in  the  first  instance  by  the  Comp- 
troller and  on  appeal  by  a  Law  Officer.  9.  A  new  mode  of 
obtaining  the  repeal  of  invalid  Patents  is  substituted  for  the 
old  proceeding  of  scire  facias. 

Whilst  the  procedure  underwent  great  alterations,  the 
substantive  law  was  but  little  touched.  The  old  decisions 
of  the  Courts  regarding  the  subject-matter  of  patentable 
inventions  ;  the  incidents  of  utility  and  novelty  which  every 
patentable  invention  must  possess  ;  the  contents  of  specifica- 
tions and  the  infringement  of  Patents  still  remain  applicable 
to  Patents  issued  under  the  late  Act.  The  duration  of  a 
Patent  is  the  same  as  before  the  Act,  and  its  extent  is 
practically  the  same,  being  only  smaller  by  the  omission  of 
the  Channel  Islands.  The  principal  changes  to  be  noticed 
are:— 1.  The  Board  of  Trade  was  empowered  to  order 


.tut  li<  >  i,. .  -  if  they  make  default  in  gran: 

i'le  terms.    "2.  ;..-lit  <-f  the  < 

u«<»)  minus  without  making  com) *  \va*i 

.1!.., h-h,  ,i  :;.  \  I'.iti  nt  maybe  aeaigned  for  any  pta 
or  part  of  the  United  Kingdom.  4  A  British  I'.tt.  i 
longer  oomea  to  an  end  at  the  expiration  of  any  earli>  r 

.it. nt  for  the  sauic  in\.  ntiun. 
Hi-  tin..  -upplciiieiitaiy  Act-  have  ma<le  a  few  altera- 

in  th«    .1.  tail-  of  procedure,  and  cleared  away  *•• 
•  l-'iilita  as  to  the  meaning  of  certain   provisions  in   tin 
master  act.     And  by  the  latest  of  those  Acts  a  Regist. 

is  has  In-en  established,  which  has  been  com 
milted  t«>  tin-  charge  of  tin-  Institute  of  Patent  Agents. 

•itulate  in  brief  the  changes  effected  by  recent 
iti"M  :  Tiic  i'1-ovi-ions  of  many  earlier  statutes  were 
consolidated  and  amended  ;  several  f.-atun  >  hitherto  im- 
knowii  in  our  system  were  introduci  d  :  tin- procedure  was 
simplified  :  the  fees  payable  to  Government  on  applica- 
tions for  Patents  were  n-duc.-d,  and  greater  facilities  forth.- 
jwyin.  nt  <»f  the  subsequent  fees  were  afforded. 

It  was  hojx-d  that  l»y  thes«-  changes  the  inventivi-  talent 
of  the  nation  would  IK- stimulated  into  more  vigorous  action, 
and  that  hope  haft  not  been  disappointed,  as  a  glance  at  tlie 
statistic-*  furnished  by  the  Comptroller  in  his  reports  will 
cl.-arly   pnae.     The  average  annual   number  of  Pai 
sealed  in  the  four  years  prior  and   in   the   four  years  siil.- 
sequent  to  the  coming  into  operation  of  the  Act  of  1 
were  8,928  and  i»,:J14  respectively.     The  annual  numl  > 
applications  for  Patents  during  the  first  four  year>  of  the 
new  system  was  on  the  averaj:.    17.108,  but  no  fewer  than 
7,79*2  of  them,  that  is,  about  45  per  cent.,  were  annually 
abandoned  or  otherwise  came  to  naught.  The  number  of  ap- 
plications increases  at  the  rate  of  about  a  thousand  a  year. 

47  LINCOLN'S  bra  FIELDS,  LONDON  : 

iv. .0. 


CONTENTS 


EXPLANATION   OF  ABBEEVIATIONS       .        .        .  xvii 

CASES   CITED xix 

CHAPTER  I 

PRELIMINARY  1 


CHAPTER   II 

THE  SUBJECT-MATTER  OR  NATURE  OF  A  PAT- 

ENTABLE   INVENTION 5 

A  BARE  PRINCIPLE  NOT  PATENTABLE        ...         (5 

PROCESSES 11 

CHIEF  CLASSES  OF  PATENTABLE  INVENTIONS    .         .       14 
New  contrivances  applied  to  new  objects  or  pur- 
poses ...  .....       14 

A  new  contrivance  employed  to  effect  a  well-known 

object 14 

A  new  combination  of  known  parts  or  old  pro- 
cesses       ........       15 

A  new  mode  of  applying  a  known  thing         .         .       1(J 
Chemical  processes,  sometimes  in  combination  with 
mechanical  contrivances  .       19 


CHAPTER  III 
THE   INCIDENT   OF  UTILITY  . 


X  CON 

<  HAITI  i;  iv 

IHI      !\<  1IU.NT    OF    NO 

TBUB  IXVBNTOB 

' 

AMI8TAKT8   AND    WoRKMEX  ... 

:                                                      ..... 
U'D I"' 

\XDOXED  KXPBRIMEXTK  OP  OTHEK  PERSOXh 

PRIOR  IMPERFECT  MACHINES 

MBB  IHVEXTIOXB  n\\  '   IECT     . 

I  is  PHINTF.D  BOOHB      .        .        .        .       "1 
rios  IN  THB  SPECIFIC  vrto  \  PHIOK 

l'\TI  

;OB  PUBLICATION  BY  IXVKMOI;     ... 

C<>  VI.    CoMMtNK    VTP  .... 

I'BRIMENTS   BY   Tin  ....        <>2 

I'KIOII  POBLICATIOX  in    OMM.I.    1' 

IMITIONS 


CH.M'TKK    V 

\MolNToFlNVl.NTIoN  Kl.t.H   I  KKI  >  T< »  > 
A    PAli  

1'VTBNTS   FOR   APPLICATIOXB 

84 


CH.M'TKK    VI 
WHO   MAY    HE   A   PATI.M  I  .... 

CHAPTKi:    VII 

I'KOCEDUBE  ON   APPLYING    I  <»i;   \   PATKXT      . 
TITLE 

CHA1TKK    VIII 

Till.    rUnVIMONAIi   SPF.nni  ATION       ...       94 

VEXTIOX 96 

OF  THB  PROVISIONAL  Si-Ecim  VTI..N     . 


CONTENTS  xi 
CHAPTER   IX 

PAGE 

THE    COMPLETE   SPECIFICATION    ....  100 

PROCEDURE        . 101 

CLERICAL  ERRORS     .......  105 

DRAWINGS 106 

RELATION  OF  THE    COMPLETE   TO  THE  PROVISIONAL 

SPECIFICATION      .....         .        .  107 

RULES  TO   BE  OBSERVED    IN  PREPARING    SPECIFICA- 
TIONS 

Good  faith 112 

Definition  of  the  Invention         .         .         .         .112 
Must  fully  describe  the  means  of  carrying  the 

invention  into  effect 114 

Description  must  not  be  vague  and  general         .  117 
Must  precisely  describe  all  materials  and  ingre- 
dients           ..118 

Must  describe  the  best  method  of  operating        .  121 

Must  communicate  the  latest  information  .         .  123 

But  need  not  set  forth  every  application     .         .  125 

Must  be  intelligible  to  workmen  of  ordinary  skill  125 

Combinations 131 

Ambiguity  to  be  eschewed          .         .         .         .135 
Must  not  set  forth  two  methods  when  only  one 

is  effective 136 

Must  not  contain  misdirections  or  misrepresenta- 
tions      ........  137 

Technical  and  scientific  terms  ....  189 

Claims 140 

Everything  not  claimed  isimpliedly  disclaimed  .  141 
Claims  ought  to  show  clearly  what  is  intended 

to  be  claimed 142 

If  all  the  parts  are  old,  only  the  combination 

should  be  claimed 143 

New  parts  and  minor  combinations  must  be  ex- 

piessly  claimed       ......  145 

The  claims  must  not  cover  too  much          .         .145 

Vague,  speculative  claims  to  be  avoided      .         .  149 

CHAPTER   X 

ON  THE  INTERPRETATION  OF  SPECIFICATION  .  152 

CONSTRUCTION  OF  CLAIM  .                          ...  157 


xii 

<  HMTI   I;    XI 

OPPOMIIoN    T<>    TIIK    (iH1  I'M  I A 

>  \L  TO   THI     I.VW    On  .  .  .  .       hi" 

I'M  IM  i  i'   is   THIS  ('<•  N  OP 

>K  DATE 

Kl\  \I.    Ari'l.lc   \TION8 

M\:  l'-7 

COSTS 

CHAlTKi:    XII 

Till      PATENT,    1T>    DAT!..   IHKATKtN.   AND     i 

TKNT ...      170 

(  HAITI.!;    Xlll 
AMENDMKNTS  <>K    si'K(  II  K  ATIONS       . 

AlI'KAl.   TO   THE    L\\\     0  ....       180 

WHO    IS    KNTITLED    TO   OPPOSE   .  .  .  .  .180 

i  SDH  OF  OPPOSITION 1^1 

CONDITIONS    IMPOSED    ox    ALLOWING   AMEND.MI 

INDEH    THE    OLD    L,A\Y 1^1 

COITIONS    TNOEH    THE    Al'T    OF    1888 
1.  \ri.\NATION8 

Ari  i.i*  ATION  TO  A  JUDGE  FOR  LIBKKTY  TO  APPLY  TO 

AMIM>     I'l   MM.NTK    LlTK 1M 

AMI  NDMKNTN    Ml  ST     NOT      KNLARGE     OR     MATKKI AI.I.V 

\  AI;V  THi:  OHKHNAL  INVENTION    ....     1H(> 

I>IM  LAIMKK-     I   M'l  K    THE    OLD    LAW  .  .  .1*7 

POWERS  OF  THE  MASTER  OF  THE  ROLLS          .        .1s" 
Co-          r.'M 

CHAPTER   XIV 

KXII.NSION    OR    PROLONGATION   OF    LKTTERS 

PATH  NT l'.»l 

THE  PETITION  AND  PROCEDURE        ....  198 

THE  HEARIS               ]it"» 

THE   A< COI-NTS l!'H 

(iiutrM>s  or   I>      IBIOM   rroN  THE  MERIT                   .  °2<>'2 


CONTENTS  xiii 

PAGE 

THE  NEW  PATENT 206 

COSTS 208 

SELECTED  DECISIONS  OF  THE  PRIVY  COUNCIL  .  209 


CHAPTER   XV 

ASSIGNMENTS   AND  LICENCES 

ASSIGNMENTS 216 

LICENCES 219 

COMPULSORY  LICENCES      .....  225 


CHAPTER   XVI 

THE   REGISTRATION   OF   PATENTS,  ETC.       .     '  .  228 

CHAPTER   XVII 

INFRINGEMENTS 233 

WHERE  THE  PRINCIPLE   is  NOT  NEW       .        .        .  242 

INVENTION  OF  IMPROVEMENTS  NO  DEFENCE      .        .  246 

COMMON  DILEMMA 247 

COMBINATIONS 247 

CHEMICAL  PROCESSES  AND  PRODUCTS       .        .        .  254 
DEALING  IN  ARTICLES  MADE   BY  INFRINGING  A  PA- 
TENT             ....  261 

INFRINGEMENT  BY  USER   .                 .         .         .         ;  263 

AGENTS      .        .        .        ".        .        .        .        .        .  265 

CARRIERS  . 265 

FOREIGN  VESSELS      .        .        .        .        .        .        .  265 

THE  CROWN       .        .        .        .     ^   .  •   .-.  ~      .        .266 

CASES  OF  NON-INFRINGEMENT   .        .                 .        .  267 

INTENTION  OF  INFRINGER  NOT  MATERIAL         .        .  269 

CHAPTER  XVIII 

THE    PRACTICE     IN    ACTIONS    FOR    INFRINGE- 
MENTS        ...  .272 

CONCURRENT  ACTIONS  AGAINST  SEVERAL  INFRINGEBS  .  276 

ISSUES        ....                 ....  276 

INSPECTION  OF  MACHINES  AND  PROCESSES         .         .  277 

PARTICULARS. OF  BREACHES 279 


00  v 

I'Ulll-    I    I  M  :«iSs        .....        -JMO 

. 

OF   MODBLH   REFUSED 

l\  .... 

TlIK     TlCl\!  ........ 

I:\IIM  NCB  .       .  .  ... 

ID  J       .'.      •  1      l'i:l  M.         .  .       :>!> 

!>\M\I.  I'KOKITS  .         .         .     :>s»2 

DBLI\  I  \:\     II'    i>l:  M  \<  MINES. 

"7-/.<\/)  ......... 


t-  M.<\          ........ 

COSTS     \ND    ('KUTIKICATK8  ...... 

CIIAITKH    XIX 

\(  TIONS  TO  H1.STKAIN  A  PATENTEE'S  THREAT  .  808 

THKI  at     .........  805 

:  IONS    .....  H<M; 

DAMAOM   ......... 

OK  VM.IIHTY          .....     .SOH 

Co-  .........     HOK 

CHAPT1  II    XX 

THK  REVOCATION  OF  PATENTS      ....    809 
COSTS         ......... 

CHAPTER   XXI 
OFFENCES  AND  THEIR  PENALTIES       .        .        .     :ili 

CHAPTER  XXII 

INTERNATIONAL     AND     COLONIAL     ARRANGE- 

MKNTS 

IMKHNATIONAI,  ARRANGEMENTS        .        .        .        . 
COLONIAL  AKKANV.KMI  ..... 

IAPTER  XXIII 

THE  PATENT  OFFICE         ......    828 

THE  COMPTROLLER-  GENERAL     .  823 


CONTENTS  XV 

I'ACK 

GENERAL  EULES 325 

THE  SEAL  OP  THE  PATENT  OFFICE  ....  326 

OFFICIAL  DOCUMENTARY  EVIDENCE  ....  326 

REGISTERS 327 

PUBLICATIONS  AND  INDEXES 327 

PUBLIC  LIBRARY .  328 

PATENT  MUSEUM  329 


CHAPTER  XXIV 
THE  INSTITUTE  OF  PATENT  AGENTS  .  330 


APPENDIX 

PART  I.-STATUTES,  INTERNATIONAL  CONVEN- 
TION, RULES,  FEES,  AND  FORMS 

STATUTES— 21  James  I.  ch.  3  (1623)  .  .  .  .335 

46  &  47  Viet.  ch.  57  (1883)  .  .  .337 

48  &  49  Viet.  ch.  63  (1885)  .  .  .867 

49  &  50  Viet.  ch.  37  (1886)  .  .  .369 
51  &  52  Viet.  ch.  50  (1888)  .  .  .370 

INTERNATIONAL  CONVENTION  AND  PROTOCOL     .        .  373 

PATENT  RULES,  1890          .        .        .        ...  377 

SCHEDULE  OF  FEES  .         .         .         .         ...        .  391 

SCHEDULE  OF  FORMS 393 

LAW  OFFICERS  RULES        .         .         .         .         .         .  406 

PRIVY  COUNCIL  RULES       .        .  -.        .        .  408 

REGISTER  OF  PATENT  AGENTS  RULES  411 


PART    II.— PATENT    LAWS  OF    FOREIGN  COUN- 
TRIES 

I'AGE  l'Ai;K 

America,  United   States  Brazil     .         .  .  .  430 

of        .        .         .         .     422  I  Chili       .         .  .  .431 

Argentine  Republic         .     425  Colombia        .  .  .  482 

Austria  .         .         .         .426      Congo  Free  State   .  .  482 

Belgium          .         .         .     428  i   Costa  Rica      .  .  .  433 

Bolivia   .                               429      Denmark  433 


!                           . 
Fiulan.i  . 
France  . 

. 
.     485 

. 

••  State 

. 
. 

1  M   !'!...  l!.\ 

. 

"gal 

i;                 .       . 

Hawaii  . 

.      Ill 

. 

.        I.1M 

Holland 
Honduras 

.      Ill 

Spain 

. 

.       I.V.I 
.     4(12 

Italy       . 
Japan     . 
Liberia  . 

. 

S\vit/«  iland    . 
Transvaal 
Tunis     . 

. 

Luxembourg  . 

.     450 

Turk 
I'nijjuay 

Nicaragua 
Norway  . 

.     4.12 

.     l.vj 

V.  :.•   ";.  !  i 

.      Iti-.i 

PATENT    LAWS    OF    BRITISH 
POSSESSIONS. 


COI.MNII-;>    AM- 


Bahama  Islands     .  .     470 

Barbadoea       .         .  .471 

P.orm-o,  British  North  .     472 

British  Guiana        .  .     472 

British  Honduras  .  .     478 

Canada  .        .        .  .478 

Cape  of  Good  Hope  .     477 

'ii    .        .        .  .     477 

Fiji        .        .        .  .478 

Hong  Kong    .        .  .    479 

India      .         .        .  .479 

Jamaica          .        .  .     482 

Leeward  Islands    .  .    488 

Malta  488 


Mauritius        .         .         .  484 
Natal      .... 

Nt  \\  foundland         .         .  4H« 

-outh  Wales  .         .  486 

New  Zealand  ...  487 

Queensland     .         .         .  491 
St.  Helena      .         .         .408 
South  Australia      . 
Straits  Settlements 
Tasmania       ... 

Trinidad          ...  496 

Victoria ....  497 

Western  Australia  .  :.no 


INDEX 


EXPLANATION   OF  ABBREVIATIONS 


Act  of  1852 15  &  16  Viet.  c.  83 

Act  of  1883 46  &  47  Viet.  c.  57 

Act  of  1885 48  &  49  Viet.  c.  63 

Act  of  1886 49  &  50  Viet.  c.  37 

Act  of  1888 51  &  52  Viet.  c.  50 

Ad.  &  El Adolphus  &  Ellis'  Eeports 

B.  &  A Barnewall  and  Adolphus'  Eeports 

B.  &  Aid Barnewall  and  Alderson's  Reports 

B.  &  C Barnewall  &  Cresswell's  Eeports 

Bea Beavan's  Eeports 

B.  &  S.,  or  Best  &  Sm.    .  Best  &  Smith's  Eeports 
Bing.  N.  C Bingham's  New  Cases 

Bos.  &  Pul Bosanquet  &  Pullar's  Eeports 

C.  B Common  Bench  Eeports 

C.  B.  N.  s Common  Bench  Eeports,  New  Series 

C.  &  K Carrington  &  Kirwan's  Eeports 

C.  &  P Carrington  &  Payne's  Eeports 

C.  L Common  Law  Eeports 

Carp.  Eep Carpmael's  Eeports  of  Patent  Cases 

Ch.  D Law  Eeports,  Chancery  Division 

Coop.  C.  C Cooper's  Chancery  Cases 

Cr.  M.  &  B Crompton,  Meeson,  &  Eoscoe's  Eeports 

Dav.  P.  C Davis'  Patent  Cases 

De  G.  F.  &  J De  Gex,  Fisher  &  Jones'  Eeports 

De  G.  &  J De  Gex  &  Jones'  Eeports 

DeMacM&  Gonl  ^  ^  °'\  De  Gex'  Macn»ghten  &  Gordon's  Eeporta 

De  G.  J.  &  S De  Gex,  Jones  &  Smith's  Eeports 

Dr.  &  Sm Drewry  &  Smale's  Eeports 

E.  &  B.,  or  El.  &  Bl.  .    .  Ellis  &  Blackburn's  Eeports 

E.B.&E.,orEll.Bl.&Ell.  Ellis,  Blackburn  &  Ellis'  Eeports 

Ell.  &  Ell Ellis  &  Ellis'  Eeports 

Eq.  Eep Equity  Eeports 

Exch.  Eep Exchequer  Eeports 

Giff Giffard's  Eeports 

Goodeve's  Cases.    .    .    .  Goodeve's  Patent  Cases 

1  Griffin  P.  C Griffin's  Patent  Cases 

2  Griffin  P.  C Griffin's  Eeports  of  Cases  before  Law  Officers 

H.  Bl H.  Blackstone's  Eeports 

H.  &  M Hemming  &  Miller's  Eeports 

H.  L.  C .    House  of  Lords  Cases 

Holroyd Holroyd  on  Patents 

Holt  N.  P.  C Holt's  Nisi  Prius  Cases 

Hurlst.  &  Norm.  Ex.  Eep., ,  Hurlstone  &  Norman's  Exchequer  Eeports 

or  Jri.  cV  IN  •  •      •      *      •      • ' 

Johns Johnson's  Eeports 

Jur.  N.  s.    ......     Jurist,  New  Series 

K.  &  J Kay  &  Johnson's  Eeports 

a 


EXPLANATION    OK   ABBREVIATIONS 

x.  H.  Ch.  law  Journal  Report*,  New  Serial.  Chancery 

Law  Journal  Report*.  New  Bsriea.  Queen'*  Beneh 

ditto.  Common  PteM 

v  K.EX.  ...  ditto,  BKeheauer 

L.  R.  App.  Ca.     .  The  Law  ReporU,  Appeal  Case* 

Rngli.h  and  Iriah  Appeals 
L-R-t,'   I:   I'  .  Do.  '.•  i  I' 

L.R.EX.  DO.          bh  i  •:  Dfc  .....  • 

L.  R.  Ch.  I>  ......  Do.  Chancery  Division 

'  °    Uw   **}  Do.  Chancery  Appeal, 


IMW  Rep.  Eq.  .    .    .  Do.  Equity  Case* 

Law  Rep.  C  Do,  Qtnm      I   • 

L.  T  ........  Law  Time*  ReporU 

L.  T.  x.  K.  .....  Do.  New  Serie* 

liacr.  P.  C  ......  Macrory't  Patent  Cam 

Mac.  A  Oord.  .....  Maenaghten  A  Gordon's  Report* 

II.  A  (J  .......  Manning  and  Qrainger's  ReporU 

II.  A  \v  .......  MeeMn  A  Webby's  ReporU 

Her  .........  Merivale'a  ReporU 

Moore  P.  C  ......  Moore's  ReporU  of  Cases  in  the  Privy  Council 

Moore  P.  C.  C.  M.  s.  .    .    .  Ditto.  New  Series 

Myl.  A  Cr  .......  Mylne  A  Craig's  ReporU 

N.  R  ........  The  New  ReporU 

Newton's  Lond.  Jour.  .     .  Newton's  London  Journal 

Pract  Mcch.  Jour.  .     .    .  Practical  Mechanic's  Journal 

R.  P.  C  ........  ReporU  Patent  Cases  (Patent  Office) 

Ross  ........  Russell's  ReporU 

Ry.  A  Moo  ......  Ryan  A  Moody's  Reports 

Scott  C.  B.  R  .....  Scott's  Common  Bench  ReporU 

Stark.  K  .......  Starkie's  ReporU 

Times  R  .......  The  Times  ReporU 

T.  R.      .......  Term  ReporU 

Tyr  .........  Tyrwhitt's  ReporU 

V.  A  B  ........  Vesey  A  Beamea'  ReporU 

W.  N  ........  Law  ReporU,  Weekly  Notes 

W.  P.  C  .......  Webster's  ReporU  of  Patent  Cases 

W.  R  ........  The  Weekly  Reporter 

T.  A  C  ........  Young  A  Collier's  ReporU 


CASES   CITED 


The  Defendant's  Name  is  printed  in  Italics 


Abel's  Application,  169 

Adair's  Patent,  194,  197,  201,  205 

Adair  v.  Young,  234,  264,  276 

Adam's  Patent,  174 

Adams  v.  North  British  Railway 

Co.,  225 

Adamson's  Patent,  re,  59,  63 
Adie— Clark,   107,   134,   145,  153, 

225  248 

Adie  v.  Clark,  223,  224 
Aiden — Fletcher,  76 
Aire  and  Calder,  etc.,  Application, 

161 

Airey's  Application,  160 
Albo-Carbon  Light  Co.  v.  Kidd,  76, 

300 

Albuquerque — Nunn,  297 
Allan's  Patent,  re,  196 
Allen's  Patent,  183 
Allen  v.  Doulton,  185 
Allen  v.  Rawson,  31,  289 
Allison— Collard,  274 
American    Braided    Wire    Co.    v. 

Thomson,  25,  57,  67,  288,  293, 

294,  299 

Amos — Eeynolds,  71 
Ancoats  Vale  Rubber  Co. — Spen- 
cer, 265,  288,  302 
Anderson— Stead,  40,  269 
Anderston    Foundry    Co.,    The — 

Harrison,  133, 134, 141, 152, 250, 

251,  252 
Anglo-American   Telegraph  Co. — 

Piggott,  278 

Anglo-American  Brush  Corpora- 
tion—King, Brown,  and  Co.,  45, 

110 
Anglo-American  Brush  Corporation 

v.  Crompton,  282 
Arkwright—  Bex,  23,  33,  51,  115, 

127,  309 

Arkwright  v.  Nightingale,  129 
Army    and     Navy    Co-operative 

Society — Tickelpenny,  76 


Arnold  v.  Bradbury,  106,  150 
Ashburn — Calvert,  84 
Ashworth's  Patent,  181,  183,  187 
Aston— Brook,  77,  80,  84 
Aston— Saunders,  148 
Atherton's  Patent,  164 
Aube's  Patent,  205 
Automatic  Weighing  Machine  Co. 

v.   International  Hygiene   Co., 

301 
Automatic  Weighing  Machine  Co. 

v.  Knight,  8,  241,  298,  300 
Automatic  Weighing  Machine  Co. 

—Combined  Weighing  Machine 

Co.,  299,  305,  306,  307,  308 
Automatic  Weighing  Machine  Co. 

v.  Combined  Weighing  Machine 

Co.,  157,  242,  305,  308 
Avery's  Patent,  310,  311 
Axmann  v.  Lund,  224,  225 


Bacon  v.  Jones,  275 

Badham  v.  Bird,  300 

Badische  Anilin  und  Soda  Fabrik 

v.  Dawson,  261 
Badische  Anilin  und  Soda  Fabrik 

v.  Levinstein,  19,  25,  121,  122, 

125,  126,  156,  240,  241,  258,  260, 

285,  286,  287,  298 
Baily,  ex  parte,  167 
Bailey's  Patent,  163,  201,  202 
Bailey  v.  Roberton,  19,  74,  84, 109, 

111,  116,  119,  124 
Bainbridge  v.  Wigley,  91 
Bairstow's  Patent,  160,  163 
Bakewell's  Patent,  re,  196 
Ball  v.  Lelm,  301 
Ball's  Patent,  194,  197,  208 
Bamlett  v.  Picksley,  82 
Barber  v.  Grace,  237,  242 
Barber  v.  Harris,  31 
Barker  v.  Shaw,  33 
Barlow  v.  Baylis,  49 

a  2 


CITKI» 


• 

!.,'•.  .  '.         .  .    '  :  <        ;..: 

Barrett  T.  Day,  805,  806 

Co..  Irtmttet-BarMtt,  806 

Telephone  Co., 


Bateman  T.  Gray,  888 
Bateman  and  Moore's  Paten 
BafcMOU—  Walton.  48.  138 
Bate*  and  RadgAte,  toe  part*  99, 

166.  171 

Bailey  T.  Kynock,  878,  879,  808 
Batty—  Thomson,  60,  85 
fioyto—  Barlow.  49 
Boyiu-Ootea,  875 
Batakad     PttotjSIQ 
Beard  v.  Eowion,  87,  98.  185,  186, 

180,  186,  889 
Beard  T.  Turner,  898 
Beck  and  Justice's  Patent,  188 
Bell's  Patent,  180,  198 
fimec&e—  Bridaoi 
hennet  -Moon,  133,  184,  885 
fimnw  -Proctor.    134,   841,  348. 

345,  346,  865 

Bentley  T.  Fleming,  58,  63 
Stmyon  —  Campi< 
Berdan's  Paten  t 
Server—  Jonea.  54,  380 
Bergmann  T.  Macmillan,  318 
Bette'  Patent,  196.  198,  300,  201 
Betts  T.  Dt    Vitre,  55.   155,  365. 

370,  395,  301 
Betta  T.  Mauiet,  55,  57,  59,  154, 

345,  373,  374 

Betta  T.  Neiltcn.  363,  864,  887 
Beto-Neilson,  140,  293 
Better.  WMmott,  •_'••.!.  -JTI 
BMWrky—  Croesley,  124,  130,  156, 

08,  V7<-, 

B0»ley—  Hancock 
Bewlej  T.  Han& 
Bibby-Penn,  83,  98,  108,  110,  124, 

363,  380,  382,  293 
Bickford  T.  Skeu-es,  121.  126,  138, 
Binney  v.  Feltmann,  15 
Birch  v.  Mather.  383 
Bird—  Badham.  300 
Bishop—  Qtmdl,  245,  247 
Blake's  Patent,  205 
Blakey  T.  Latham,  68,  882,  388. 

398,299 

Blamond's  Patent,  re,  174 
Blank  T.  Footman,  898 
BUatU*—  Galloway,  46,  136 
fiboMtr-Honiball,  40 
Bloxam  T.  Ehce,  27,  31,  106,  ISA 

140,  177,  318 


I  •      •       •   :         !   ..'        '      .    ••• 

Boot— Hall,  868 

Booth  v.  Kennard,   16.   117.   148, 

M 
Bo»toc*-Foxwell.    97,   181.   188, 

188,  184.  185 
Bottle  Envelope  Co.  T.  Stvmer,  79, 

NO 
Boolton  r.  Dull.  7,  11.  18,  17,  89, 

69 
Boulton— Hornblower,  6 

: 

Boviir*  I'au-nt.  807 
liovill  T.  CraU,  374,  376 
Borill  T.  Goodier,  277 
Bovill  v.  Iladlfy.  301 

1  T.  Ktyworth,  850 
BovM—  Knowlea,  888 

11  T.  Moore.  88,  877 
Bovill  T.  Pimm.  848,  869 
Bower  T.  Hodge*.  888 
Bowman  v.  Taylor,  880 
Bown  T.  Sanium,  384 
Boyd  T.  Harrock*.  345,  388,  886, 

•99 

Bradbury— Arnold,  106.  150 
Bradbury— Haydock,  300 
Bramah  v.  HardcattU,  59 
Brand—  Gibson,   11,   12,  29.  113. 

125,  362,  366 

Brandon's  Patent,  176,  192 
Bratby— Codd,  185 
Braver— Sharp,  76,  304,  305 
Bray- Sugg,  303 

Bray  v.  Gardner,  67,  136,  185, 899 
Brereton  T.  Richardson,  44,  49 
Brett—  Electric  Telegraph  Co.,  10, 

12,238 

Bridson  T.  Uentcke,  274 
Bridson  v.  McAlpine,  275 
Briggs  v.  Lardeur,  273.  274 
Britain  v.  Hirsch,  67,  76.  387, 388 
British  Dynamite  Co.  T.  Krebs,  129, 

157 

Brook  T.  Aston,  77,  80,  84 
Brook*— Noton.  I 
Brotherhood—  Halsey,  303 
Brown — Hastings.  107,  135 
Brown's  Application,  95 
Brown  v.  Moore,  277 
Brunton  T.  Hawkts,  23,  27,  72 
Bryant  and  May— Fusee  Testa  Co., 

185,306 
BuW— Boulton,  7,  11,  13,  17,  29. 

69 

Buller— Smith,  302 
Burgess  T.  Hattley,  297 
Burgess  v.  i/t«5,  297 
Burland'a  Trade  Mark,  296 


CASES   CITED 


XXI 


Burnett,  v.  Tate,  253,  261,  303 
Burt  v.  Morgan,  305 
Bush  v.  Fox,  13,  80,  245,  289 
Butler— Elsey,  280 


Caldwell  v.  Van  Vliessengen,  264, 

266 

Calvert  v.  Ashburn,  84 
Campbell— Speckhart,  232,  263 
Campion  v.  Benyon,  91 
Cannington  v.  Nuttall,  16,  83,  189 
Cardwell's  Patent,  193, 199 
Carez's  Application,  88,  332 
Carpenter's  Patent,  207 
Carpenter  v.  Smith,  37,  45,  87 
Carr's  Patent,  201 
Challender  v.  Boyle,  304,  306,  307 
Chamberlain — Heugh,  225 
Chambers  v.  Crichley,  219,  225 
Chandler's  Patent,  160,  162 
Chanter  v.  Dewhurst,  225 
Chanter  v.  Johnson,  225 
Chanter  v.  Leese,  222 
Chappell  v.  Puraay,  87 
Chatwood's  Patent,  194 
Chavasse  v.  Stevens,  223 
Cheavin  v.  Walker,  88,  314 
Cheetham  v.  Oldham,  278,  279,280 
Childs'  Patent,  215 
Chollet  v.  Hoffman,  216,  230 
Christy— Ellwood,  231,  292 
Chubb— Kaye,   55,   56,    134,  155, 

157,  237,  245,  247,  288,  294 
Church     Engineering    Co. — Wil- 
son, 306 
Church  Engineering  Co.  v.  Wilson, 

280 
Church's  Patents,  193,  194,   197, 

206,  207,  208 
Claridge's  Patent,  192 
Clark's  Patent,  re,  196,  199 
Clark  v.  Adie,  107,  134,  145,  153, 

225,  248 

Clark— Adie,  223,  224 
Clark— Ellington,  117,  247 
Clark  v.  Ferguson,  273 
Clarke  —  Ormson,  78,  85 
Clarke— Walker,  305 
Clayton— Goucher,  219,  253 
Clayton— Murray,  16,  49,  237,  253, 

293 

Chines— Saxby,  243,  246,  250 
Cochrane's  Patent,  181 
Cochrane  v.  Smethurst,  91 
Cooking's  Patent,  197 
Codd's  Patent,  184 
Codd  v.  Bratby,  185 
Cole  v.  Saqui,  67,  139,  299 
Coles  v.  Baylis,  275 


Collard  v.  Allison,  274 
Colley  v.  Hart,  304,  305 
Combined  Weighing,  etc.,   Co.  v. 

Automatic    Weighing    Machine 

Co.,  299,  305,  306,  307,  308 
Combined  Weighing  Machine  Co. 

—Automatic  Weighing  Machine 

Co.,  157,  242,  305,  308 
Conder— Hall,  217 
Conniff's  Application,  165 
Cook  v.  Pearce,  91,  93 
Cooper — Palmer,  280 
Cooper  v.  Whittingham,  297 
Corcoran — Wegmann,    114,     119, 

154,  302 
Cornish  v.  Keene,  13,  17,  36,  38, 

46,  47,  51 

Couchman  v.  Greener,  224 
Cowley— Russell,  16,  23,  69,  130, 

143 

Crabtree's  Patent,  182 
Craig  and   Macfarlane's  Applica- 
tions, 165 
Crampton  v.  Patents  Investment 

Co.,  98,  111,  124,  305,  308 
Crampton — The  Queen,  316 
Crane's  Patent,  24 
Crane  v.  Price,  12,  15,  23,  67,  69 
Crate— Bovill,  274,  276 
Crawley — Bushton,  78 
Crichley— Chambers,  219,  225 
Croll  v.  Edge,  112 
Crompton — Anglo-American  Brush 

Corporation,  282 
Crompton  v.  Ibbotson,  128 
Cropper  v.  Smith,  27, 148, 157, 184, 

219,  237,  299,  300 
Crossley  v.  Beverley,  124, 130, 156, 

238,  276 
Crossley  v.  Derby  Gas  Light  Co., 

292,  293 

Crossley  v.  Dixon,  223 
Crossley  v.  Potter,  22, 112, 124, 138, 

148,  150,  288 
Crossley  v.  Stewart,  282 
Crossley  v.  Tomey,  280,  282 
Crosthwaite  v.  Steele,  224 
Croysdale  v.  Fisher,  44 
Cunard  Co.— Washburn,  etc.,  Co., 

265,  296 

Curtis  v.  Platt,  240,  242,  243,  279 
Cutler— Eegina,  79,  84,  136 
Cutler— Bex,  147,  309 

Dale— Wallington,  14,  121,  189 

Dance's  Patent,  161 

Dangerfield  v.   Jones,  10,   19,  22, 

158,  224 

Dania— Tatham,  67,  73,  79,  251 
Daniel's  Application,  161 


i   \>l->   <  II  Kit 


Dart's  Patents,  90.  180 
Davenport  v.  Goldberg.  277 

i  •  .  .  •  .  i  .  •  ; 

Davenport  v.  Phillip 
Davenport  v.  HicHardt,  382 
Davenport  v.   liyiandt.  961,  370 

993,801 

I  and  Woodlcy.  169 
i>  .  .^    Lfvia,TQ 
Daw  v.  Kley,  107  •   389 

Dawton-  Badiaehe     Anil  in     and 

Soda  Fabrik,  361 
floy     Barrett,  805,  808 
Deaoon'i  Patent,  301.  915 
I)e  la  Hue  v.  Dickinson,  391 
De  la  flw-Sturtz.  93.  130.  123. 

135 
Derby  Out  Light  Co.-  Croaaley, 


Daring,  ex  porte,  166 
Deroane   v.  Fairie,  17,  2.: 

138 

Deroane's  Patent,  304,  311.  409 
De  Vi/rr-  Bette.  55,  155,  2' 

995.301 

Dewhunt—  Chanter, 
Dewick-  Fisher,  93,  280 
Dickinson—  De  la  Bu> 
Dickinson—  Sellers,  158,  250 
Dismore,  r.  . 
Dixon's  Patent,  re.  in". 
Dixon—  Crosalev 
Dixon  v.  London  Small  Arm*  Co., 

Limited,  366 
Dollond'a  Paten: 
Doulton—  Allen,  185 
Dowries  v.  Falcon  Worfci,  -_M7 
Drake  v.  .Muntz's  Metal  Co.,  379 
Driffield.  etc..  Co.  v.  Water  low  and 

Co.,  305 

Drumnumd's  Patent,  313 
Drysdale—  Owynne,  287 
Dublin  and  Liverpool,  etc.—  Wash- 

born,  etc.,  Co.. 
Dudgeon    v.   Thomson,   153,   189, 

234,  248,  250,  251,  273.  27 
Duke    of    Buccleuch—  Wakefield, 

275 
Duncan  and  Wilson's  Patent,  200, 

201,202 
Dunnicliff  v.  Mallet,  218 


Eades  v.   Starbuck   Waggon  Co., 

113 

Eadie's  Patent,  164 
Easterbrook    v.     Great     Western 

Railway  Co.,  22,139,  11 

'.Ml.  •_'  I •_».-.". 1 1 
Easttrbrook  -Saxby,  298 


COMB  KM  Railway  Co.— 
Oraavcw.  980 
Eatton  -TeUej.  74.  128.  135,  140. 

JW^~Crol 

/     :;,        ......    .1     If^fSI 

Pxigebery  v.  Sfetwiu,  87 

Eduoo  and  Swan  United,  Co.  v. 

Woodh.m*e,    16.    71      117.    196, 

Ediaoo  and  Swan  Co.  v.  Holland, 
36.  49,  85.  118.  139,   154,   288, 

MA,  Ml,  198,  Jr. 
Bdiaon   Telephone  Co.   v.    Imlia 

Rubber  Co.,  989 
Edmund's  Paten:  318 

/:/.  •        i..  H  i,  -7.  9S,  i-''.,  LM, 

130,  186,  389 
l.lni.,1,  v.  /UM,i5,9Jft,S4.-. 

•-'"ii.  IM,  Ml 
Electric  Lighting  Co.  —  Liardet, 

Electric  Power  Storage  Co. — Union 

Electrical  Power  Co.,  304 
Electric  Telegraph   Co.  v.   Brett, 

10,  I-.' 

c    Telegraph  Co.   v. 

Daw, 107 
Elgie  v.  Webtler. 
A'/A*m-Upmann.  .'71 
Ellington  v.  CUi, 
Elliot  v.  Turner,  I'.'l.  1'.'. 
Elliott— Xcwall.  1 

111.  U-',  268,  269 
Ellwood  v.  Chritty,  2H1 
Elmslic  v.  Boursier,  •_'•'.  1 
£l»«-Bex,  147 
£bee— Bloxam,  27,  31,  106,   138, 

140,  177,  218 
Else;  v.  £u//«r,  280 
Equitable  Telephone  A$sociation — 

United  Telephone  Co..  274,  275 

^ -Hills,  20,  66,  290 
Evans  and  Otway's  Patent,  165 
Everington — Mackintosh,  120 
Everitt's  Case,  103 


Fairburn—  Household,  306 
Fairburn  v.  Household,  113,  142, 

143 

Fatria-  Derosne,  17,  23,  121.  1'J  :< 
Falcon  Works — Downes,  347 
Fardell— Poapard,  107 
Farquharson — Plating  Co.,  I'.' 
Feather  v.  The  Queen,  174,  26C, 

Fearer— Griffin,  298 


CASES  CITED 


XXlll 


Feltham—  Slazenger,  74,  286 
Feltmann — Binney,  15 
Felton  v.  Greaves,  92 
Fenn— White,  246,  250 
Ferguson — Clark,  273 
Fernie — Young,  19,  20,  84,  287 
Fisher  v.  Dewick,  93,  280 
Fislier — Croysdale,  44 
Fleming— Bentley,  58,  62 
Fleming— United  Telephone  Co., 

280 

Fletcher  v.  Aidcn,  76 
Fletcher  v.  Glasgow  Gas  Commis- 
sioners, 268 

Flower  v.  Lloyd,  253,  279,  280,  294 
Footman— Blank,  298 
Ford  v.  Foster,  293 
Forrester — Upmann,  297 
Forsyth  v.  Riviere,  12, 17,  30 
Foster— Ford,  293 
Foster— Muntz,  19,   42,   85,   119, 

120,  258,  262,  273,  289 
Fothergill— Neilson,  224 
Fowler  v.  Gaul,  281 
Fox— Bush,  13,  80,  245,  289 
Fox— Holland,  280 
Foxwell  v.  Bostock,  97,  131,  132, 

133,  134, 135 
Foxwell  v.  Webster,  276 
Foxwell— Thomas,  147,  158,  245, 

289,  290 

Franks— Pidding,  221 
Fraser— Hocking,  294,  298 
Frearson  v.  Loe,  70,  148,  267,  276, 

295 

Fuller— Morgan,  280 
Furness'  Patent,  201 
Fusee  Vesta  Co.  v.  Bryant  and 

May,  185,  306 


Galloway's  Patent,  197,  201 

Galloway  v.  Bleaden,  46,  136 

Gamble  v.  Kurtz,  236 

Gandy  v.  Reddaway,  148 

Gann— Wilson,  282 

Gardner— Bray,  57,  126,  185,  299 

Gardner— Nordenfeldt,  145,  176, 
243 

Gare's  Patent,  re,  105,  174,  189 

Garrard  v.  Edge,  253,  283 

Garthwaite's  Patent,  165 

Gas  Light  and  Coke  Co. — Patter- 
son, 28,  60,  75 

Gaul— Fowler,  281 

Gaulard  and  Gibb's  Patent,  76, 110, 
111,  117,  180,  185,  187,309,311, 
313 

Gaulard  v.  Lindsay,  185,  305 

Geary  v.  Norton,  272 


Germ  Milling  Co.  v.  Robinson, 
59,  278,  279,  283,  299,  300 

Gibson  v.  Brand,  11,  12,  29,  113, 
125,  262,  265 

Gillett  v.  Wilby,  254 

Gisborne — Lang,  52 

Glasgow  Gas  Commissioners — 
Fletcher,  268 

Glossop's  Patent,  163 

Gloucester  Waggon  Co.— Saxby, 
64,  68,  74,  285 

Goldberg — Davenport,  277 

Goodfellow — Haslam  Co.,  185 

Goodier— Bovill,  277 

Goodwin— Higgs,  19,  268 

Gosnell  v.  Bishop,  245,  247 

Goucher's  Patent,  207 

Goucher  v.  Clayton,  219,  253 

Gozney's  Application,  164 

Grace— Barber,  237,  242 

Grand  Junction  Railway  Co. — 
Newton,  250 

Gray — Bateman,  288 

Gray— McCormick,  268 

Great  Eastern  Railway  Co.— 
Sheehan,  218 

Great  Northern  Railway  Co. — 
Harwood,  77,  80 

Great  Western  Railway — Easter- 
brook,  22,  139,  143,  240,  241, 
242,  294 

Greaves  v.  Eastern  Counties  Rail- 
way Co.,  280 

Greaves — Felton,  92 

Green's  Patent,  163,  231 

Green— Mathers,  176,  222 

Greener — Couchman,  224 

Gridley  v.  Swinborne,  315 

Griffin's  Applications,  168 

Griffin  v.  Feaver,  298 

Grimshaw— Huddart,  54, 129, 138, 
262 

Griswold — London  and  Leicester 
Hosiery  Co.  288 

Grover  and  Baker  Sewing  Machine 
Co.  v.  Millard,  223 

Grover  and  Baker  Sewing  Machine 
Co.  v.  Wilson,  280 

Guest  and  Barrow's  Patent,  164 

Guilbert-Martin  v.  Kerr,  76,  298 

Gwynne  v.  Drysdale,  287 


Haddan's  Patent,  167,183,  311,  313 

Hadley— Bovill,  301 

Hague— Hullett,  50 

Hague— Losh,  35,  78,  272,  273 

Halbard — Newton,  152 

Hall  and  Hall's  Patent,  163,  164 

Hall  and  others,  184 


Hal!  ».  C.m^r.  217 


Hall's  il>r  )  Patent.  39 
-HM 


67,  70,  WO,  284, 

•"•7   :tiMi 

Hall  T.  /arru.  70 
Haisey  T.  Brotherhood,  808 
namiltcn    Hayward.  16,  71,  187, 
M 

Hampton  and  Facer's  Patent,  188 

Hancock—  Bewlej,  19 
Hancock  v.  Bewley,  176 
Hancock  T.  Moufem,  254 
Hancock  T.  Som^rwW,  40 
HardcastU—  Bramab,  59 
Hordc«ffc-Haworth,24,  148,  157 
Hanly's  Patent,  201,  207 
Hart—  Taylor,  288 
Harford  -Neilson,  7,  23,  93,  115, 
125,  126,  127,  138,  155,  289 
Harrii—  Barber,  81 
Harris  v.  RothtctU,  53,  281 
Harrison  v.  The  Anderston  Foundry 

Co.,  133,  184,  141.  152,  2/-< 

252 

Harrison  —  Newby,  225 
Harrison  v.  Taylor,  298 
Harrison  —  United  Telephone  Co., 

53,  110,  253 
Hart—  Colley,  304,  30-"> 
Hart—  Mullins,  44 
Hartley's  Patent,  12 
Hartley     Heap,  -2-J4.  225,  232 
Hanvood  v.  Great  Northern  Rail- 

way Co.,  77,  80 
Haslam  Co.  v.  Goodfellow,  185 
Haslam—  Nickels,  92 
Haslam  v.  Hall.  57,  76,  280,  284, 

297,300 

HassaH  v.  Wright,  216,  230 
Hastings  v.  Brown,  107,  135 
Hateley-  Burgess,  297 
Hatfield—  Russell,  280 
Hatches—  Brunton,  23,  27,  72 
Haworth  v.   Hardcastle,  24,  148, 

157 

Haworth--  Townsend,  252,  269 
Haydock  T.  Bradbury,  300 
Hayne  T.  Maltby,  221 
Haythornthwaite's  Application,  163 
Hayward  and  Eckstein  v.  Pavement 

Light  Co.,  237 
Hayward  T.  Hamilton,  16,  71,  237, 

306 

Heald—  Steiner,  19,  291 
Healey's  Application,  165 
Heap  T.  Hartley,  224,  225,  282 
Hearson's  Application,  1W) 
Hearson's  Pat.  : 


Heath  and  Proat's  Paunt.162.  186 
Heath's  Patent,  197.  198,  Slf 

ii.  tfft  N    Mti  .  It,  r. 

'.•    .'. 
170,  v-'i 

B     ••:    tuSy.  i •'.:'.' Ji.^ 

Henry ,  tx  par tt,  106,  167 
AmMMtett-HoUidaj,  2*1. 987 
Herbert'!  Patent,  196,  207 
Herrborgor  T.  Squire,  58,  78,  76. 

IOM01 

HMM  T.  SUvtnton,  218 

Heugh  T.  Chamberlain,  986 

Hcugh  T.  Magill,  274 

Hickt — Lovell,  288 

//.^/.n* -Seed.  148,  168.  188,  888, 

MB,  Ml 

HigRt  T.  Goodwin,  19,  868 
Higham  —  London    Hosiery    Co., 

in 

Hill  v.  Thompson,  14.  23,  27,  80, 

88,  146,  278 
Hill  v.  Tombs,  82 
Hills'  Patent,  197.  198,  200,  802, 

J.205,  208,  211 
Hills— Bargeas,  297 
Hills  v.  Evans,  20,  56,  290 
Hills  v.  Laming,  220 
Hills  v.  Liverpool  Go*  Light  Co., 

Hills  v.  London  Gas  Light  Co.,  19. 

•i-.  M,  H,  -.'-.i 
Hinde  v.  Osoom*.  288 
Hinks  v.  Safety  Lighting  < 

11'..  I!.'.  153,  158 
Hirsch-  Britain,  67,  76,  287,  888 
Hirschfeld— Leather    Cloth    Co., 

J first— Osmond.  237 
Hitchcock— Wright,  108,  168,  861, 

270 

Hocking  T.  Fraser,  294,  298 
Hocking  v.  Hocking,  155,  21 

Hodges— Bower,  222 
Hoffman— Chollet,  216.  280 
Hoffman  v.  Post  ill,  888 
HoWert-Oxley,  59,  112,  262 
Holland— Edison   and  Swan  Co., 
;•    M,  US  129,  154,  288, 

284,  285,  298,  299 
Holland  T.  Fox,  280 
Holliday  T.  Hcppenstall,  281,  287 
Holliday— Simpson,    19,   21,  120. 

129,  137,  138,  154.  182 
Holmes  v.  L.  and  N.  W.  R.  Co., 

181 

Holste  T.  Robertson,  277 
Honiball's  Patent,  198,  20S 


CASES  CITED 


xxv 


Honiball  v.  Bloomer,  40 
Hookham's  Application,  163 
Hornblower  v.  Boulton,  6 
Hornby's  Patent,  208 
Horrocks— Boyd,  245,  282,  286, 299 
Horrocks  v.  Stubbs,  110 
Horsey's  Patent,  193 
Horsley  and   Knighton's    Patent, 

218,  232 

Horton  v.  Mabon,  78 
Hoskin's  Patent,  161 
Houghton's  Patent,  193,  196 
Househill  Co.  v.  Neilson,  8,  45,  51, 

126,  239,  241,  280 
Household— Fairburn,     113,    142, 

143 

Household  v.  Fairburn,  306 
Howarth— Sykes,  265,  269,  287 
Huddart  v.    Grimshaw,   54,   129, 

138,  262 

Hudson— Peroni,  287,  300 
Hughes'  Patent,  197 
Hughes — Thomson,  275 
Hull  v.  Bollard,  280 
Hullett  v.  Hague,  50 
Hulse— Macnamara,  54,  128,  247, 

280 
Humpherson  v.  Syer,  28,  62,  65, 

294,  299 

Hunt— Thomas,  220 
Hutchison's  Patent,  193 
Hutchison  v.  Patullo,  109, 117,  247 
Hyde  v.  Trent,  79 
Hydro-CarbonSyndicate  —Walker, 

288,  311 

Ibbotson — Crompton,  128 

Ihlee— Ehrlich,  25,  238,  245,  247, 
280,  282,  283 

India  Rubber  Co. — Edison  Tele- 
phone Co.,  282 

International  Hygiene  Co. — Auto- 
matic Weighing  Machine  Co., 
301 

Isaacs— Kolls,  44,  282 

Jack— Penn,  288,  293 
Jack — Spencer,  16 
Jackson  v.  Needle,  76,  275 
Jackson  v.    Wulstenhulmes,  Rye, 

and  Co.,  Limited,  142,  145 
James — Thompson,  76,  78 
Jarvis — Hall,  70 
Jensen  v.  Smith,  44 
Jepson— Davenport,  274,  275 
Johnson's  and  Atkinson's  Patents, 

194,  206 

Johnson — Chanter,  225 
Johnson — Liardet,  115 


Johnson — Needham,  154 
Johnson's  Patent,  re,  105, 190,  193, 

197,  208 

Jones — Bacon,  275 
Jones  v.  Berger,  54,  280 
Jones— Dangerfield,    10,    19,     22, 

158,  224 

Jones  -  Nobel's  Explosives  Co.,  264 
Jones  v.  Pearce,  45,  47,  267 
Jones'  Patent,  re,  97, 162, 179, 182," 

196,  198,  211 
Jordan  v.  Moore,  81,  158 
Jupe  v.  Pratt,  6,  238,  241 


Kay's  Patent,  198,  201,  209 

Kay  v.  Marshall,  27,  72, 143,  144, 

158 
Kayev.  Chubb,  55,  56,  134,  155, 

157,  237,  245,  247,  288,  294 
Keating— Stevens,    12,    119,   120, 

150,  247,  254 
Keene— Cornish,  13,  17,  36,  38, 46, 

47,  51 

Kennard—  Booth,  15,  117,148,289 
Kenny's     Button-holing     Co.     v. 

Somerville,  219 

Kerr—  Guilbert-Martin,  76,  298 
Keyworth— Bovill,  250 
Kidd — Albo-Carbon  Light  Co.,  76, 

300 

King,  Brown,  and   Co.   v.  Anglo- 
American    Brush    Corporation, 

45,  110 

King— Eothwell,  275,  300 
Kneller's  Patent,  49 
Knight  —  Automatic      Weighing- 

Machine  Co.,  8,  241,  298,  300 
Knowles  v.  Bovill,  222 
Kollmann's  Patent,  196 
Krebs — British  Dynamite  Co.,  129, 

157 

Krupp— Vavasseur,  267,  269 
Kurtz— Gamble,  236 
Kurtz  v.   Spence,  19,  25,  33,  122, 

138,  148,  166,  304,  305,  308 
Kynock— Batley,  278,  279,  302 


Lake's  Application,  160 

Lake's  Patent,  162,  169,  186,  205 

Lamb  v.  The  Nottingham  Manu- 
facturers Co.,  279 

Laming— Hills,  220 

Lancashire  and  Yorkshire  Railway 
Co.— Westinghouse,  157,  288 

Lancaster's  Patent,  163,  207 

Lang  v.  Gisborne,  52 

Lang  v.  The  Whitecross  Company, 
185 


DCfi 


cm:!- 


Lome**  -Talbot.  866.  880 


La  SoeiAU  Anonyuw  «Ut  Manu. 
factores  da  Qlaoes  v.  reaJWnan's 
Potent  Sand  Bfcui  Co.,  961, 

MB,  m 

/  .•  ..:  |  l;:.ik,  •..»••«.  ?-J.  •_—  .:-... 
9M 

Lawes  T.  Pvntr,  281 
Lawrence  T.  P«rry,  184.  800 
LeotiMr—  Lister,  15.  85.  148.  158. 

• 
Leather  Cloth  Co.  T.   Hinchfeld. 

Ml 

Ledsam—  Russell,  171,  806 
Lee's  Patent.  806 
Ldste—  Chanter,  898 
Ldm-Ball,  301 
Lever—  Reass,  225 
L«CMMfM»  —  Badisehe  Anilin  uiul 

Sod*  Fabrik,  19,  25.   P.M.    P.-.'. 

185.  186.  156.  240.  241.  258.  860, 

885.  286.  287,  298 
Lertiwtem—  Renanl.  •_'•'•.  1  1 

274,  282.  288 
Lewis  T.  Dai-is,  70 

Lewis  T.  Marling,  28,  30.  34,  69 
Liardet  T.  Electric  Lighting  Co., 

HI 

Liardet  T.  Johnson,  1  1  " 
Liddell's  Patent,  161 
Limiaay-Oaalard,  185,  305 
Linford—  Otto.  11.  26,  57.  127.  130, 

131,  153,  239.  268,  289 
Linoleum   Manufacturing    Co.    T. 

Nairn,  314 

Lister  T.  Eattwood,  268 
Lister  T.  Leather,  15,  85,  143,  158, 

246,  249.  250.  251,  252,  280 
Lister  T.  Norton,  28,  44,  77,  93,  98, 

275.  282 

Liverpool  Gas  Light  Co.     Hills. 

Ml 

Livtity  —  Ward,  •_'•-'! 
Lloyd  -Flower,  253,  279,  '-'- 
Lloyd—  Patent  Type  Founding  Co., 

278 
Loe-Frearson,  70.  148,  267.  276, 

295 

L'Oiseau  and  Pierrard 
London  Gas  Light  Co.—  Hill-.  P.'. 

48,  56,  85,  289 
London  and  Globe  Telephone  Co.— 

United  Telephone  Co.,  264 
London  Hosiery  Co.  v.  Higham,3Bl 
London  and  Leicester  Hosiery  Co. 

v.  Grisiffold,  288 
iMndan  and  N.  W.  R.  Co.—  Holmes, 

181 


London  and  N.  W.  R.  Co. -Smith, 

London  Small  Amu  Co.,  Limited 

KV,  ...  HI 
London  onu  <o.-8mUh. 

NO 
Lougbottom  v.  Shaw.  76.  898. 999. 

,UM 

Lono/ord  Win  Co.  -Walk. 
Loah  T.  llagw,  85.  78,  272.  878 
Lott's  Invi 
Lovell  v.  Jfifkt.  288 
Lowe's  Pat.  \  194 

1.  ,  .     I'.',  a*  1-- 

LueaS  T.  Uillrr.   1  1  1 

Loke's  Patent.  165 
Inmd-Axmann.  884,  895 
Lynde's  Patent,  164 

Mabon— Horton,  78 
Jfoi/puM  -Bridson.  275 
Macalpine  T.  Hangnail.  158 
MoCormick  T.  Gray,  868 
McDoagal's  Patent.  196 
MacEvoy's  Patent,  168 
Macfarlane's  Patent,  168 
Maefarlane  T.  Price,  107,  IP.' 
Macfarlane— Templeton,  21,  158 
Mclnnes'  Patent,  198 
Mackelcan  T.  fUnnie,  112.  116 
Mackintosh's  Patent,  808 
Mackintosh  T.  Everington.  180 
Macmillan — Bergmann,  218 
Macnamara  v.  HuUc,  54,  128,  247. 

280 

Magill— Heugh.  274 
Maignen't    nitre    Rapide    Co.— 

Parker.  283 
Main's  Patent,  322 
Malcolmson  —  Plimpton.   " :',.   Ill, 

ng»— Moss 
Mallet's  Patent. 
Mallft     Dtinnicliff.  218 
Maltby— Hayne.  J.'l 
Manceaux,  exparte,  166.  171 
Manchester  Tramways  Co. 

by,  49,  238 

Mangnall— Macalpine,  158 
Manton  T.  Manton,  88,  23 
Manton  v.  Parker,  22,  23 
Markwick'sPaUnt.  -_'ni 
Marling— Lewis,  23,  30,  3 1 
Marsden  v.  Saville  Street  Foundry 

Co.,  88 

Marsh— Minima 
Marshall's  Application,  86,  168 
Marshatt-EAy,  '.'7.  7.'    1 J3,  144, 

158 


CASES  CITED 


XXVll 


Marshall  v.  Marshall,  296 
Mather— Birch,  283 
Mathers  v.  Green,  176,  222 
May — Wenham  Co.,  247 
Medlock's  Patent,  re,  182 
Mellin  v.  Monico,  285 
Menzies— Beits,  55,  57,   59,   154, 

245,  273,  274 
Metcalf— Bex,  91 
Middleton — Morton,  107 
Millard — The   Grover  and  Baker 

Sewing  Machine  Co.,  223 
Miller — Lucas,  111 
Milligan  v.  Marsh,  87 
Milner's  Patent,  208 
Minter  v.  Mower,  31,  50,  146,  239 
Minter  v.  Wells,  10,  23,  31,  241 
Minter  v.  Williams,  262,  265 
Mitchell's  Patent,  re,  193,  204 
Moncrieff's  Patent,  204 
Monico — Mellin,  285 
Moore  v.  Bennet,  133,  134,  285 
Moore— Bovill,  23,  277 
Moore — Brown,  277 
Moore— Jordan,  81,  158 
Moore — Thomson,  245 
Morey's  Patent,  231 
Morgan's  Patent,   184,   210,   230, 

232,  312 

Morgan— Burt,  305 
Morgan  v.  Fuller,  280 
Morgan  v.  Seward,  21,  23,  25,  27, 

60,  114,  116,  122,  127,  234,  277 
Morgan  v.  Windover,  49,  76, 82,  111 
Morgan-Brown's  Patent,  208 
Morris— Bowcliffe,  113,  143,  297 
Morton  v.  Middleton,  107 
Morton's  Patent,  207 
Moseley   v.   Victoria  Rubber  Co., 

49,  57,  111,  126,  280,  282,  283 
Moss  v.  Malings,  59 
Mostyn — Henderson,  222 
Mottishead — United  Telephone  Co., 

277 

Moulton — Hancock,  254 
Mower— Minter,  31,  50,  146,  239 
Mullins  v.  Hart,  44 
Muntz's  Patent,  201,  211 
Muntz  v.  Foster,  19,  42,  85,  119, 

120,  258,  262,  273,  289 
Muntz's  Metal  Co.— Drake,  279 
Murdoch — Warner,  272 
Murray  v.   Clayton,   16,   49,   237, 

253,  293 


Nairn — Linoleum    Manufacturing 

Co.,  314 

Napier's  Patent,  193,  197,  206 
Nash—  Williams,  173 


Neale— Smith,  217 
Needham  v.  Johnson,  154 
Needham  v.  Oxley,  279,  295 
Needle— Jackson,  76,  275 
Neilson's  Patent,  24,  127 
Neilson— Betts,  263,  264,  287 
Neilson  v.  Betts,  140,  292 
Neilson  v.  Fothergill,  224 
Neilson  v.  Harford,  1,  23,  93,  115, 

123,  125,  126,  127,  138,  155,  289 
Neilson — Househill  Co.,  8,  45,  51, 

126,  239,  241,  280 
Neilson — Rex,  309 
Neustadt—Von  Heyden,  3,  45,  53, 

57,  261 
Newall  v.  Elliott,  13,   16,  63,  92, 

97,  111,  112,  268,  269 
Newall  v.  Wilson,  274 
Newby  v.  Harrison,  225 
Newman's  Patent,  162,  163,  164 
Newton's    Patent,   194,   200,   201, 

205,  208 

Newton  v.  Grand  Junction  Rail- 
way Co.,  250 
Newton  v.  Halbard,  152 
Newton  v.  Vaucher,  83,  268 
Nickels'  Patent,  174 
Nickels  v.  Haslam,  92 
Nightingale — Arkwright,  129 
Nobel's   Explosives   Co.  v.  Jones, 

264 

Nordenfeldt's  Patent,  181,  184 
Nordenfeldt  v.  Gardner,  145,  176, 

243 

Normand's  Patent,  193,  205 
Normandy's  Patent,  207 
North    British     Railway     Co. — 

Adams,  225 

Norton's  Patent,  192,  196 
Norton— Geary,  272 
Norton— Lister,  28,  44,  77,  93,  98, 

275,  282 

Noton  v.  Brooks,  223 
Nott— Electric  Telegraph  Co.,  274, 

280 
NottingJiam  Manufacturers'  Co. — 

Lamb,  279 

Nunn  v.  Albuquerque,  297 
Nussey  and  Leachman's   Patent, 

215 

Nuttall— Cannington,  16,  83,  189 
Nye— Williams,  74 

Oddy  v.  Smith,  300 
Oldham— Cheetham,  278,  279, 280 
Ormson  v.  Clark,  78,  85 
Osborne— Hinde,  288 
Osmond  v.  Hirst,  237 
Otto  v.  Linford,  11,  26,  57,  127, 
130,  131,  153,  239,  268,  289 


CASKS    CITK1) 


Otto  v.  Singer.  994 

Oxford   and  Cambridge  Univerti* 
tie*  v.  Hickardum,  966 

.  v.  Holden,  69,  119,  969 
Octy— Needham.  979,  996 


Palmer  v.  Cooper,  980 

Palmer  v.   Wagttaff,  91,  98,  187, 

Parker  v.  Maignen't  Fiitre  Rapid* 
Co.,  989 

7><irA:<T-Manton,  99,  98 

Parkes  T.  Stetww.74, 184, 988, 951, 
959 

Parnell's  Patent,  999 

Parr— Potter,  144 

Pa»call  v.  Toope.  989 

Patent    Bottle    Envelope    Co.    v. 
Seytner,  79,  950 

Patent  Type  Founding  Co.  v.  Lloyd, 
978 

Patent    Type    Founding    Co.    v 
Richard,  121,  260 

Patent    Type    Founding    Co.    v. 
Waiter,  277 

Patents  Investment  Co. — Cramp- 
ton,  98,  111,  124,  805,  308 

Paterson's  Patent,  163 

Patterson  T.  The  Gas  Light  and 
Coke  Co.,  28,  60,  75 

Patterson's  Patent,  196 

Patterson — United  Telephone  Co., 
301 

Patterson— Washburn,  etc.,  Co.  ,294 

Patullo— Hutchison,  109,  117,  247 

Pavement    Light    Co. — Haywood 
and  Eckstein,  237 

Pearce— Cook,  91.  :•:< 

Pearce— Jones,  46,  47,  267 

Penn  v.  Bibby,  82,  98,  108,  110, 
124,  263,  280,  282,  998 

Penn  v.  Jack,  28- 

Perkins'  Patent,  201,  212 

Peroni  v.  Hudson,  287,  300 

Perry— Lawrence,  184,  300 

1'ettit  Smith's  Patent,  198,  207 

Philip— Ridgway,  220 

Phillips— Davenport,  277 

Philpot  v.  Hanbury,  23,  113 
Picksley— Bamlett,  82 

i'idding  v.  Franks,  221 
Pietschmann's  Patent,  180,  190 

Piggott   v.   Anglo-American  Tele- 
graph Co.,  278 

Pimm  -Bovill,  243,  989 

Pitman's  Patent,  193,  194 

Plating  Co.  v.  Farquharson,  19 

Platt  -Curtis,  240,  242,  243,  279 


Plimpton  T.  Ualeolnuan,  68.  114. 

!»•••.  •276,996 

Plimpton   v.  Smfer,  62.  68,  142, 

176,960 

1'odmorc  v.  Wrv, 
Pofcfcm-Pooley,  190.  999 
Pooled  Patent,  901,  906 
Pooler  v.  Pointon,  190,  996 
Porter's  Patent,  re  Honiball,  40 
Post  Card    Automatic   Supply  Co. 

•      •          li    -       •      •-  : 

Po(<«r— CroMley,  1,188, 

1H.  150,988 
Potter  v.  I'arr,  144 

r -Walton,  155,  985,  959 
Poupard  v  107 

-  Jupe.  6.  988. 

PriM-Crane,  12,  15,  23,  67.  69 
Price— Macfarlai. 
Price— Savory.  1 
Printing  and  Numerical  Regis t  11 

ing  Co.  T.  Sampson,  219 
Proctor  v.  Bennu,  134,  241,      48, 

245,  246,  265 
Proctor  v.  Button  Lodge  Chemical 

Co.,  301 

Pullan's  Patent,  107 
Purday— Chappell,  87 
Pur»*r— Lawes.  221 


Queen,  The,  v.  Grampian,  316 
Queen,    T^-Feather.    174,    266, 

267 
Queen,  The,  v.  H'allis,  316 

Ralston  v.  Smith,  IS,  TV  1 JH,  187, 

188 

Raipson—  Allen,  31,  989 
Reddaway— Oandy,  148 
Redmund,  re,  190 
Recce's  Pat- !.t 

Regina  v.  Cutler,  79,  84,  136 
Regina  v.  > 
Renard  v.  Levinstein,  26,  113,  273. 

274,  282,  283 

Bennie— Mackelcmi.  IT.',  llf. 
Reuss  v.  Lever,  . 
Rex  v.  Arkvnight,  23,  33,  51,  115, 

127. :«» 

Rex  v.  Cutler,  147,  309 
Rex  v.  Else,  \  17 
Rex  y.  Metcalf,  91 
Rex  T.  Neilton,  309 
Rexv.  Wheeler,  11,  91,  127 
Reynolds  v.  Amos,  71 
Richard — Patent  Type  Founding 

Co.,  121,  260 
Richards— Davenport,  262 


CASES   CITED 


XXIX 


Richardson — Brereton,  44,  49 
Richardson  —  Oxford    and    Cam- 
bridge Universities,  265 
Bidgway  v.  Philip,  220 
Riviere— Forsyth,  12,  17,  30 
Robert's  Patent,  198,  209 
Roberton— Bailey,  19,  74,  84,  109, 

111,  116,  119,  124 
Robertson— Holste,  277 
Robinson's  Patent,  97 
Robinson — Germ  Milling  Co.,  59, 

278,  279,  283,  299,  300 
Rodger s — Stocker,  301 
Rolls  v.  Isaacs,  44,  282 
Roper's  Patent,  196 
Rosenthal— Young,  22,  270,  299 
Rothwell— Harris,  53,  281 
Rothwell  v.  King,  275,  300 
Rowcliffe   v.   Longford  Wire  Co., 

76 

Rowcliffe  v.  Morris,  113,  143,  297 
Royle— Challender,  304,  306,  307 
Ruberry's  Patent,  190 
Rushton  v.  Crawley,  78 
Russell's  Patent,  161,  164, 198 
Russell  v.  Cowley,  16,  23,  69,  130, 

143 

Russell  v.  Ledsam,  171,  206 
Russell  v.  Hatfield,  280 
Ruthven's  Patent,  204,  213 
Ryder's  Patent,  213 
Rylands— Davenport,  261, 270, 292. 

301 
Rylands— Useful  Patents  Co.,   62, 

63,  224 


Safety  Lighting  Co. — Hinks,   70, 

116,  142,  153,  158 
St.  George —United  Telephone  Co., 

238,  273,  301 
Sampson — Printing  and  Numerical 

Registering  Co.,  219 
Samuel  —  Post-Card      Automatic 

Supply  Co.,  224 
Sansum — Bown,  284 
SonsMW^-Woodward,  97,  98,  108, 

110,  124 

Saqui— Cole,  67,  139,  299 
Saunders  v.  Aston,  148 
Saville  Street  Foundry  and  En- 
gineering Co. — Marsden,  88 
Savory  v.  Price,  122,  138 
Saxby's  Patent,  re,  197,  199,  201, 

204,  212 

Saxby  v.  dunes,  243,  246,  250 
Saxby  v.  Easterbrook,  293 
Saxby    v.  Gloucester  Waggon  Co., 

64,  68,  74,  285 
Saxby  v.  Bennett,  167,  245 


Schlumberger's  Patent,  194,  205 
Scott—  Smith,  223 
Scott  and  Young,  ex  parte,  167 
Seed  v.  Higgins,  143, 158, 188,  288, 

289,  292 

Sellers  v.  Dickinson,  158,  250 
Serrell's  Patent,  186 
Seward — Morgan,  21,  23,  25,  27, 

60,  114,  116,  122,  127,  234,  277 
Seymer — Bottle  Envelope  Co.,  79, 

250 

Shallenberger's  Application,  88 
Sharp's  Patent,  re,  190 
Sharp  v.  Brauer  76,  304,  305 
Sharpies— United  Telephone  Co., 

261,  264,  299 
Shaw— Barker,  33 
Shaw— Longbottom,  76,  298,  299, 

300 
Sheehan  v.  Great  Eastern  Railway 

Co.,  218 

Sheffield,  ex  parte,  160 
Siddell  v.  Vickers,  97, 98,  104,  111, 

140,  293 

Sielaff's  Application,  164 
Silber— Sugg,  282 
Sillar's  Patent,  193,  214 
Simpson  v.  HolUday,  19,  21,  120, 

129,  137,  138,  154,  182 
Simpson  and  Isaac's  Patent,  162 
Singer— Otto,  224 
Singer  Manufacturing  Company  v. 

Wilson,  278 

Singer  v.  Stassen,  176,  185 
Skewes— Bickford,  121,  126,  138 
Slazenger  v.  Feltham,  74,  286 
Smethurst — Cochrane,  91 
Smith's  Patent,  104,  181 
Smith  v.  Buller,  302 
Smith — Carpenter,  37,  45,  87 
Smith— Cropper,  27, 148, 157, 184 

219,  237,  299,  300 
Smith— Heath,  43,  45 
Smith — Jensen,  44 
Smith—  Oddy,  300 
Smith  v.  London  and  N.  W.  R.  Co., 

218,  250 
Smith  v.  London  and  S.  W.  R.  Co., 

250 

Smith  v.  Neale,  217 
Smith—  Ralston,  13,  75,  148,  187, 

188 

Smith  v.  Scott,  223 
Soames'  Patent,  203 
Societ6  Anonymedes  Manufactures 

de  Glaces  v.  Tilghman's  Patent 

Sand  Blast  Co.,  261,  262,  303 
Societd    Generale    d'ElectriciU — 

Werderman,  218 
Somervell — Hancock,  40 


XXX 


CASKS    CITKI* 


Somirvill*    Kmny's  Buttonholing 

Co.,  919 

Southworth'i  Patent.  196 
SoMwroy—  Van  Gelder.  318 
Speekhart  v.  CompbtU,  389,  MS 
Spence's  Patent.  169 
^pMM-Korts.    19.  86.  88.  198. 

188,  148.  166.  804,  806,  808 
Spencer  v.  Ancoatt    Volt  Rubber 

Co.,  966,  888,  808 
Spencer  Y.  Jack,  16 
Spill*—  Plimpton.  58,  68.  148. 

158.  154,  167.  375,  880 
Spar*—  Herrbarger,    58,  78,  76, 

804.807 

SUIT-..!'-   P:it,  !it.   I-..K 

Starbuck  Waggon  Co.—  Eades,  118 
Statsen—  Singer.  176,  185 
Stead  v.  Xndmon,  40.  969 
Stead  T.  William*,  40,  48,  58 
Sto«J—  Otto,  53.  883,  394.  801 
SUele—  Crosthwaite,  334 
Steiner  v.  Heald,  19,  391 


Stevens—  Chavaaae,  888 
Stevens—  Edgeberry,  87 
Stevens  v.  Keating,  !•_>.  11'*.  )-'<' 

150,  347,  354 
SUvnu—  Parkes,  74.  134,  288,  351, 

•_>:••_> 

Steoetu-Watling,  111,  134,  888 
Ster«Mon—  Hesse,  318 
Stewart—  Crossley,  383 
Stewart  —  United     Horsenail    Co., 

•-'  1.298 

Stewarts'  Patent,  194,  197,  198 
Stocker  v.  Rodgers,  301 
Stone—  Wyatt,  151 
Stoner  v.  Todd,  58,  98,  108 
Stoney's  Patent,  196,  204,  215 

Tangye,  45,  48,  295 
Stubbs—  Horrocks,  110 
Startz  v.  De  la  live,  92,  120,  123. 

125 

Sugg  v.  Bray,  303 
Sugg  T.  Silber,  883 
Button    Lodge    Chemical    Co.— 

Proctor,  301 
Swedish    Horsenail    Co.—  United 

Horse  Shoe  and  Nail  Co.,  76,  187 
Swinborne—  Oridley,  815 
Syer—  Hnmpherson.    38,    63.   65, 

894,  •-".'!• 
Sykes  v.  Houarth,  366,  26'.' 


Talbot  v.  Larochf,  355,  880 
Tangye  T.  StoU,  46,  48,  295 
Tate— Burnett,  358,  361,  808 
Tatham  v.  AMMO,  67,  78,  79,  351 


'/',:•  |  .-       r.'.w.:iin    V.»0 

Taylor  T.  Hart,  9S8 
Taylor—  Harrison,  898 
TempUton  T.  Mat/aHatu,  81.  1M 

IMI«  ».  t.  :•:.  <74,  r.»:i  \r..  no. 

145,  149.  889 

Thorns*  T.  Foanotll.  147.  158.  845. 

HI,  •_••«» 

Thomac  v.  7/im^.  880 
Thoma.  T.  WMeJk,  108.  141,  148.  158 
TkompHm—mi  14,  38,  37.  80,  88, 

146.  878 

Thompson  T.  Janus,  76.  78 
Thornton-  American  Braided  Wire 

Co..  25,  57.  67.  888,  898.  894,  899 
Thomson  T.  Hatty,  60.  86 
TAomjon-  Dudgeon.  158.189.884, 

848,  850,  851.  878.  374.  895 
Thomson  v.  Hughes,  375 
Thomson  v.  Moorr,  845 
Thorn  v.  Worthing  Skating  Rink 

Co.,  384,  353 
Tickelpenny  v.    Army  and  Navy 

Co-operatine  Society,  76 
Tityhman'*  I'atfnt  Sand  Blatt  Co. 

—  Soc.   Anon,  den  Manufactures 

de  Olaces,  361,  363.  308 


Todd-  Stoner,  58,  98,  108 
lolson's  Patent.  163 

omte—  Hill.  83 
Tomeu—  Croacley,  880,  888 
3>u_  White,  76 
Tope—  Pascall,  388 
Townsend  v.  Hawortk,  358,  369 
Townsend—  United  Telephone  Co., 

301 

Tranter's  Patent,  re,  181 
Tmtf—  Hyde,  79 
Trotman's  Patent,  301 
Trotman  v.  Wood,  888,  887 
Turner—  Beard,  898 
Tttrn*r—  Elliot,  121.  155 
Turner  v.    Winter,   37,    118,   133, 
IM 

Union  Electrical  Power  and  Light 

Co.  v.  Elfctrical  Power  Storage 

Co.,  304 
United  Horse  Nail  Co.  T.  Stewart, 

31,393 
United  Horse  Shoe  and  Nail  Co.  v. 

Swedish  Hone  Nail  Co.,  76,  187 
United     Telephone    Co.  -  Barney, 

307 
United  Telephone  Co.  T.  Bassano, 

23*.  289 
United  Telephone  Co.  v.  Equitable 

Telephone  Association,  274,  275 


CASES  CITED 


XXXI 


United  Telephone  Co.  v.  Fleming, 

280 
United  Telephone  Co.  v.  Harrison, 

53,  110,  253 
United  Telephone   Co.  v.  Londoii 

and  Globe  Telephone  Co.,  264 
United   Telephone  Co.  v.   Mottis- 

head,  277 
United  Telephone  Co.  v.  Patterson, 

301 
United  Telephone  Co.  v.  St.  George, 

238,  273,  301 
United  Telephone  Co.  v.  Sliarples, 

261,  264,  299 

United  Telephone  Co.  v.  Townsend, 
301 

United  Telephone  Co.  v.  Walker, 
263,  293,  294 

Universities  of  Oxford  and  Cam- 
bridge v.  Rictutrdson,  265 

Unwin— Heath,  123,  256,  257,  270, 
280 

Upmann  v.  Elkan,  271,  272 

Upmann  v.  Forrester,  297 

Useful  Patents  Co.  v.  Rylands,  62, 
63,  224 

Van  de  Poele's  Patent,  322 
Van  Gelder's  Patent,  180 
Van  Gelder  v.  Sowerby,  218 
Van    Vliessingen — Caldwell,    264, 

266 

Vaucher— Newton,  83,  268 
Vavasseur  v.  Krupp,  267,  269 
Ftc&ers— Siddell,  97,  98,  104,  111, 

140,  293 
Victoria  Rubber  Co. — Moseley,  49, 

57,  111,  126,  280,  282,  283 
Vincent's  Patent,  re,  167 
Von  Buch,  163 
Von   Heyden  v.  Neustadt,  3,  45, 

53,  57, 261 

Wagstaff—  Palmer,  21,  23,137, 158, 

262,  280 

Waketield  v.  Duke  of  Bucdeuch, 
275 

Walker— Cheavin,  88,  314 

Walker  v.  Clarke,  305 

Walker  v.  Hydro-Carbon  Syndi- 
cate, 288, 311 

Walker  v.  Longford  Wire  Co.,  76 

Walker — United    Telephone    Co., 

263,  293,  294 

Waller  and  Batcliff  s  Application, 

161 

Wallington  v.  Dale,  14,  121,  189 
Wallis— The  Queen,  316 
Walter — Patent    Type    Founding 

Co.,  277 
Walton  v.  Bateman,  48,  123 


Walton  v.  Lavater,  218,  219,  261 
Walton  v.  Potter,  155,  235,  252 
Ward  v.  Livesey,  221 
Warman's  Application,  160 
Warner  v.  Murdoch,  272 
Washburn  Co.  v.  Cunard  Co.,  265, 

296 
Washburn,  etc.,  Co.,  v.  Dublin  and 

Liverpool,  etc.,  Co.,  265 
Washburn,  etc.,  Co.  v.  Patterson, 

294 
Waterlow   &  Co.— Driffield,    etc., 

Co.,  305 

Watling  v.  Stevens,  111,  134,  288 
Webster's  Patent,  163 
Webster— Elgie,  220 
Webster— Foxwell,  276 
Wegmann  v.  Corcoran,  114,  119, 

154,  302 

Welch's  Patent,  162 
Welch— Thomas,  108, 141, 143, 158 
Wells— Minter,  10,  23,  31,  241 
Wenham  Co.  v.  May,  247 
Werderman   v.    Societe    Gentrale 

d'Electricite,  218 
Westinghouse's  Patent,  183 
Westinghouse  v.  Lancashire  and 

Yorkshire  By.  Co.,  157,  288 
Wheeler— Bex,  11,  91,  127 
White  v.  Fenn,  246,  250 
White  v.  Toms,  76 
Whitecross  Co. — Lang,  185 
Whitehouse's  Patent,  207,  213 
Whittingham — Cooper,  297 
Wield's  Patent,  196,  199,  208 
Wigley — Bainbridge,  91 
Wilby— Gillett,  254 
Willacy's  Patent,  194,  196,  202 
Williams — Minter,  262,  265 
Williams  v.  Nash,  173 
Williams  v.  Nye,  74 
Williams— Stead,  40,  48,  53 
Willmott— Betts,  261,  271 
Wilson — Church  Engineering  Co., 

280 
Wilson  v.  Church  Engineering  Co., 

306 

Wilson  v.  Gann,  282 
Wilson — Grover  and  Baker  Sewing 

Machine  Co.,  280 
Wilson— Newall,  274 
Wilson  —  Singer     Manufacturing 

Co.,  278 

Windover— Morgan,  49,  76, 82,  111 
Winby  v.  Manchester,  etc.,  Tram- 
ways Co.,  49,  238 
Winter— Turner,     27,   118,     122, 

136 

Wirth's  Patent,  re,  87 
Wood— Trotman,  223,  237 
Wood  v.  Zimmer,  59,  62,  121 


x xxii  CASES  CITED 

Woodcroft'i  Patent,  198,  210  Wright  -  Tilghman1*.  etc.,  Co.,  2HO 

Woodkou*— Edison     and    Swan  Wttfttfnktthnm,    K^t,   end    Co., 

United  Co.,  16,71.  1 17.  126,  189.  -.iUd     Jackson.  142.  145 

143.157.264.286.298  W^ait  v    Stone,  161 
Woodward  v.  Satuum.  97, 98, 108, 

110.  124 

Worthing    Skating    Kink    Co.  Yate«  and  Kellatl'i  Patent.  199 

Thorn,  284,  262  Foany-Adair,  884.  264,  276 

Wright's  Patent,  198.  210  Young  v.  Ftrmt,  19,  SO,  84,  287 

Wright—  Haatall,  216,  280  Young  v.  BotaUhal,  22.  270,  S99 
Wright  v.  Hitchcock,  108, 158, 961. 

270 

IPngJW—  Podmore,  44  Eimmtr—  Wood,  59,  62,  121 


THE    LAW 

OF 

PATENTS   FOE   INVENTIONS. 

CHAPTER  I. 

PRELIMINARY. 

THAT  the  Crown  has  the  power  in  certain  cases  of  granting 
to  inventors  the  privilege  of  a  monopoly  in  working  their 
inventions  for  a  certain  number  of  years  is  probably  known 
to  every  reader  before  he  opens  this  volume.  During  that 
period  the  entire  community  is  precluded  from  making  use 
of  the  invention,  except  by  the  permission  of  the  inventor 
or  the  person  who  has  duly  succeeded  to  his  rights ;  the 
law  declaring  that  the  privileged  person  shall  derive  the 
exclusive  benefit,  whatever  that  may  be,  of  the  invention 
for  the  specified  time. 

This  privilege  was  formerly  secured  to  the  inventor  by 
letters  patent  passed  under  the  Great  Seal.  It  is  now  se- 
cured to  him  by  a  patent  obtained  at  the  Patent  Office,  and 
the  person  to  whom  the  privilege  is  granted  is  termed  in 
common  parlance  the  patentee. 

For  the  purposes  of  the  present  treatise,  there  is  no  need 
that  we  should  enter  upon  any  historical  disquisition  as  to 
the  common-law  right  of  the  Crown  in  matters  of  patent 
privileges.  It  will  be  sufficient  to  state  that  the  right  of 
the  Crown  to  grant  privileges  by  letters  patent  to  subjects 
obtaining  its  favour  was  exercised  in  very  early  times,  and 
it  was  only  disputed  when  exclusive  rights  to  sell  various 

B 


2  1  •l;i:i.IMlNAlJY 

commodities,  such  as  salt,  iron,  and  coal,  had  been  granted 
to  certain  persons,  to  the  great  grievance  of  How- 

subjects,  and  to  the  oppression  of  trade.  The  Statute  of 
Monopolies,  passed  in  the  twenty- first  year  of  James  I.,  was 
ltd  at  the  abases  which  an  undue  exercise  of  prerogative 
had  produced,  and  being,  says  Sir  Edward  Coke,  forcibly 
and  vehemently  penned  for  their  suppression,  cut  off  all 
claim  on  the  part  of  the  Crown  to  the  right  of  grai 
monopolies  and  exclusive  privileges,  whereby  the  subjects  of 
the  realm  could  be  aggrieved  and  inconvenienced.1 

That  statute  (»ce  tht  Appendix)  declared  that  all  mono- 
polies, grants,  and  letters  patent,  for  the  sole  buying,  selling, 
making,  working,  or  using  of  anything  within  the  realm, 
were  contrary  to  the  laws,  and  void.  But  it  excepted  from 
the  operation  of  this  enactment  all  letters  patent  and  grants 
of  privilege  of  the  sole  irorkinfj  »r  making  of  any  mann 
ni'ic  manufacture*  t»  tin-  true  and  first  inventor  of  such  manu- 
facture, which  others  at  the  time  of  making  such  letters  patent 

1  •  The  King  had  undoubtedly,  by  the  ancient  laws  of  the  realm,  Urge 
powers  for  the  regulation  of  trade ;  bat  the  ablest  judges  would  hare  found  it 
difficult  to  say  what  was  the  precise  extent  of  those  powers.  ...  In  addition 
to  his  undoubted  right  to  grant  special  commercial  privileges  to  particular 
places,  he  long  claimed  a  right  to  grant  special  commercial  privileges  to 
particular  societies  and  to  particular  individuals;  and  our  ancestors,  as 
usual,  did  not  think  it  worth  their  while  to  dispute  this  claim  till  it  produced 
serious  inconvenience.  At  length,  in  the  reign  of  Queen  Elizabeth,  the 
power  of  creating  monopolies  began  to  be  grossly  abused ;  and  as  soon  as  it 
began  to  be  grossly  abused,  it  began  to  be  questioned.  The  Queen  wisely 
declined  a  conflict  with  the  House  of  Commons  backed  by  the  whole  nation. 
She  frankly  acknowledged  that  there  was  reason  for  complaint ;  she  can- 
celled the  patents  which  had  excited  the  public  clamours ;  and  her  people, 
delighted  by  this  concession,  and  by  the  gracious  manner  in  which  it  had 
been  made,  did  not  require  from  her  an  express  renunciation  of  the  disputed 
prerogative.  The  discontents  which  her  wisdom  had  appeased  were  revived 
by  the  dishonest  and  pusillanimous  policy  of  her  successor,  called  King, 
craft.  He  readily  granted  oppressive  patents  of  monopoly.  When  he  needed 
the  help  of  his  Parliament,  he  as  readily  annulled  them ;  and  as  soon  as  the 
Parliament  had  ceased  to  sit,  his  Great  Seal  was  put  to  instruments  more 
odious  than  those  he  had  recently  cancelled.  At  length  that  excellent  House 
of  Commons  which  met  in  1623  determined  to  apply  a  strong  remedy  to  the 
evil.  The  King  was  forced  to  give  his  assent  to  a  law  which  declared  mono- 
polies established  by  royal  authority  to  be  null  and  void.'  (Macaulay's 
•History  of  England/  iv.  127.) 


PRELIMINARY  3 

and  grants  should  not  use,  so  they  be  not  contrary  to  law, 
nor  mischievous  to  the  state,  by  raising  prices  of  commodi- 
ties at  home,  or  hurt  of  trade,  or  generally  inconvenient. 
It  was  afterwards  declared  that  these  excepted  grants  of 
privilege  should  have  the  same  validity  that  they  had  pre- 
vious to  the  passing  of  the  statute,  but  no  other.  '  It  is  to 
be  observed  '  (said  Lord  Justice  James  in  the  case  of  Von 
Heyden  v.  Neustadt,  50  L.  J.  N.  s.  Ch.  126)  '  that  the  statute 
of  James  gives  no  right  to  the  inventor.  The  statute  is  a 
statute  for  the  abolishing  and  forbidding  monopolies,  and 
the  sixth  section,  under  which  the  Crown  acts  in  these 
matters,  is  a  mere  proviso  excepting  from  the  operation  of 
that  Act  certain  patents  or  grants  of  privileges,  which  are 
to  be  "  of  such  force  as  they  should  be  if  that  Act  had  never 
been  made,  and  of  none  other."  And  it  is  from  the  ancient 
power  and  prerogative  of  the  Crown  so  saved  and  preserved 
that  every  patentee  derives  his  monopoly.  What  the  Crown 
could  lawfully  do,  and  has  lawfully  done,  after  that  statute, 
is  shown  by  the  uniform  tenor  of  the  letters  patent  which 
have  been  since  issued,  by  the  advice  and  authority  of  every 
law  officer  and  every  holder  of  the  Great  Seal  for  upwards 
of  two  centuries  and  a  half.  The  power  of  the  Crown  to 
grant  letters  patent  of  such  tenor  has  never  been  brought 
in  question.' 

When  the  validity  of  a  monopoly  comes  into  question, 
the  first  point  to  consider  is,  whether  it  is  rendered  void 
by  the  statute  ;  and  secondly,  if  it  should  not  be  thereby 
avoided,  whether  it  is  a  privilege  permitted  by  the  common 
law. 

In  this  treatise,  however,  we  restrict  ourselves  to  a  con- 
sideration of  Patents  for  inventions.  It  is  not  every  kind 
of  discovery  that  can  be  protected  by  a  patent.  The  statute 
of  James  I.  requires  a  patentable  invention  to  be  referable 
to  some  manner  of  manufacture,  as  these  words  have  been 
interpreted  by  the  courts  of  law. 

Nor  is  it  every  one  who  may  succeed  in  obtaining  the 
grant  of  a  patent  for  an  invention  that  is  able  to  sustain  it 

B   2 


4  PRELIMINARY 

under  strict  legal  scrutiny.    In  order  that  a  patent  should 
be  held  valid  in  a  court  of  law  : 

1.  '/'/<-  Invention  must  possess  a  certain  amount  of  utility ; 
must  display  some  degree  of  novelty ;  and  must  have  been 
attained  by  the  exercise  of  some  measure  of  ingenuity. 

2.  Tl>    ]'•!(•  ntse  must  be  the  true  and  first  inventor, 
that  is,  he  must  not  have  obtained  the  invention  from 
another  person  (unless  he  has  imported  it  from  abroad); 
nor  must  he  have  derive. 1  it  from  a  printed  book  ;  nor  from 
a  patent  specification  published  in  this  country  or  intro- 
duced from  abroad. 

8.  The  Specification,  that  is  the  patentee's  formal  de- 
scription of  his  invention,  must  be  accurate,  intelligible,  and 
sufficient ;  it  must  point  out  distinctly  what  the  patentee 
claims  as  his  own ;  and  must  not  claim  anything  that  is  not 
his  own. 

Besides  treating  of  these  subjects,  the  procedure  in  ap- 
plications for  patents  will  be  explained  in  this  volume.  Tin 
Patent  itself,  its  form,  intent,  and  duration,  and  the  deal- 
ings with  it  by  way  of  Assignment  and  Licence,  will  be  ex- 
pounded. Various  contentious  matters,  such  as  oppositions 
to  grants,  the  infringement  of  patent  rights,  the  revocation 
of  patents,  and  the  proceedings  taken  to  restrain  a  patentee's 
threats  will  be  dealt  with.  Certain  collateral  topics,  such  as 
the  amendment  of  specifications,  the  registration  of  patents 
and  of  documents  relating  thereto,  and  the  international 
and  colonial  arrangements  for  the  reciprocal  issue  of  patents, 
will  be  handled.  A  brief  account  of  the  Patent  Office  esta- 
blishment, where  the  business  of  obtaining  patents  is  trans- 
acted, will  be  given  ;  and  lastly,  a  short  chapter  on  tin- 
Institute  of  Patent  Agents  will  be  found  at  the  end  of  the 
treatise. 


PRINCIPLES 


CHAPTEK  II. 

THE  SUBJECT-MATTER  OR  NATURE  OF  A  PATENTABLE  INVEN- 
TION— A  BARE  PRINCIPLE  NOT  PATENTABLE—  PROCESSES 
CHIEF  CLASSES  OF  PATENTABLE  INVENTIONS. 

IN  proceeding  to  consider  the  subject-matter  or  nature  of 
the  inventions  which  may  be  legally  protected  by  patents, 
it  is  proper  to  premise  that  no  general  definition  can  be 
given  which  shall  exactly  mark  out  what  can  and  what  can- 
not be  included  in  a  valid  patent.  Where  the  invention  is 
not  one  of  a  well-known  class,  it  will  be  much  better  for  the 
inventor  to  consult  some  one  conversant  with  such  matters 
— some  one  whose  practical  experience  comes  in  aid  of 
general  principles,  and  who  is  bound  by  his  profession  and 
standing  in  society  to  the  utmost  secrecy — than  to  rely 
altogether  upon  what  is  stated  in  books,  or  upon  a  narrow 
range  of  precedent.  It  is  the  more  important  that  the  in- 
ventor's attention  should  be  drawn  to  this  point  previous  to 
his  incurring  expense,  since  a  patent  is  taken  out  entirely  at 
the  risk  of  the  inventor,  the  Crown  in  no  degree  guarantee- 
ing the  validity  of  its  grant,  which,  if  contested,  will  be 
judged  by  the  abstract  rules  of  law  applicable  to  the  case. 

As  we  have  already  remarked,  it  is  not  every  kind  of 
discovery  which  can  be  protected  by  a  patent.  No  inven- 
tion is  patentable  which  does  not  fall  within  the  language 
of  the  Act  of  King  James,  and  is  not  referable  to  some 
'  manner  of  new  manufactures.'  It  is  true,  as  we  shall  see 
further  on,  that  these  words  have  received  a  very  wide  in- 
terpretation;  still  they  have  never  been  held  to  include 
such  inventions  and  discoveries  as  that  of  an  abstract  prin- 
ciple without  reference  to  any  of  its  practical  applications ; 
or  that  of  a  game  of  skill  or  chance  irrespective  of  the 


6 

appliances  for  playing  it ;  or  that  of  a  method  of  calculation 

•nnected  with  apparatus  for  working  it;  or  that  of  a 
vegetable  suitable  for  food  ;  or  that  of  a  natural  substance 
applicable  to  a  useful  purpose,  such  as  guano  or  mineral 
phosphate  of  lime ;  or  that  of  an  elementary  body  such  as 
a  metal.  Patents  which  relate  to  imvntiniis  and  discoveries 
-u.-li  as  these  can  only  be  maintained  when  they  are  taken 
out  for  the  manufacture  of  the  apparatus  required  for  the 

ti  purpose,  or  for  methods  of  preparing  the  natural  sub- 
stance for  some  useful  end. 

Before  giving  examples  of  the  chief  classes  into  which 
those  inventions  which  have  received  the  sanction  of  judicial 
decision  are  divisible,  it  may  be  well  first  to  clear  the  ground 
a  little  by  making  some  remarks  on  the  cases  relating  to 
Principles  and  Processes. 

It  has  been  repeatedly  laid  down  by  the  Courts  that 

BARE   PRINCIPLES   ABE   NOT   PATENTABLE. 

A  principle  may  be  of  the  utmost  value  in  the  eyes  of 
philosophers ;  its  discovery  may  lead  to  highly  important 
consequences,  and  form  the  germ  of  a  striking  advance  in 
civilisation ;  yet  unless  its  discoverer  can  show  at  least  one 
application  of  it  to  a  useful  purpose — unless  he  can  point 
out  the  means  of  gaining  therefrom  some  immediate  material 
advantage — he  is  not  permitted  to  exclude  his  fellow-sub- 
jects from  turning  it  to  any  account  they  like.  *  I  rather 
think  it  would  be  difficult'  (said  Lord  A'< »//«//,  in  llorn- 
M.nrrr  v.  Boulton,  8  T.  R.  95  ;  Dav.  Pat.  Ca.  221)  '  to  form 
a  specification  of  a  philosophical  principle;  it  would  be 
something  like  an  idea  without  a  substratum.' 

Neither  are  principles  in  a  more  restricted  sense  patent- 
able,  unless  they  are  embodied  in  a  concrete  form  and  their 
application  to  some  purpose  of  utility  indicated.  '  You  can- 
not '  (said  Aldcrson,  B.,  in  Jupe  v.  Pratt,  1  W.  P.  C.  145) 
'  take  out  a  patent  for  a  principle.  You  may  take  out  a 
patent  for  a  principle  coupled  with  the  mode  of  carrying 
the  principle  into  effect,  provided  you  have  not  only  dis- 
covered the  principle,  but  invented  some  mode  of  carrying 


PRINCIPLES  7 

it  into  effect.  But  then  you  must  start  with  having  invented 
some  mode  of  carrying  the  principle  into  effect.'  'Un- 
doubtedly '  (said  Eyre,  C.  J.,  in  Boulton  v.  Bull,  2  H.  Bl. 
463)  '  there  can  be  no  patent  for  a  mere  principle ;  but  for 
a  principle  so  far  embodied  and  connected  with  corporeal 
substances  as  to  be  in  a  condition  to  act  and  to  produce 
effects  in  any  art,  trade,  mystery,  or  manual  occupation, 
I  think  there  may  be  a  patent.  ...  It  is  not '  (referring  to  the 
case  before  him) '  that  the  patentee  has  conceived  an  abstract 
notion  that  the  consumption  of  steam  in  fire-engines  may 
be  lessened,  but  he  has  discovered  a  practical  manner  of 
doing  it,  and  for  that  practical  manner  of  doing  it  he  has 
taken  his  patent.  Surely  this  is  a  very  different  thing 
from  taking  a  patent  for  a  principle  ;  it  is  not  for  a  prin- 
ciple, but  for  a  process.  Again,  the  substance  of  the  inven- 
tion is  a  discovery  that  the  condensing  the  steam  out  of  the 
cylinder,  and  protecting  the  cylinder  from  the  external  air, 
and  keeping  it  hot  to  the  degree  of  steam-heat,  will  lessen 
the  consumption  of  steam.  This  is  no  abstract  principle ; 
it  is  in  its  very  statement  clothed  with  practical  applica- 
tion.' 

In  the  much-debated  case  of  Neilso?iv.  Harford  (1 W.  P.  C. 
295)  a  great  deal  was  said  as  to  the  point  now  before  us.  Neil- 
son  took  out  his  patent  in  1828  for  the  improved  application 
of  air  to  produce  heat  in  furnaces,  and  in  his  specification 
declared  that  his  invention  consisted  in  passing  a  blast  of 
air  from  the  blowing- apparatus  into  an  air-vessel  kept 
heated  to  a  red-heat,  or  nearly  so,  and  from  that  vessel,  by 
means  of  a  pipe,  into  the  furnace ;  that  the  size  of  the 
vessel  must  depend  on  the  blast,  and  on  the  heat  necessary 
to  be  produced,  but  that  the  form  of  the  vessel  was  imma- 
terial to  the  effect,  and  might  be  adapted  to  the  local  cir- 
cumstances or  situation.  The  defendants,  who  were  alleged 
to  have  infringed  this  patent,  contended  that  it  was  void,  as 
being  for  a  principle.  The  Court  of  Exchequer,  after  full 
consideration,  thought  that  the  plaintiff  did  not  merely 
claim  a  principle,  but  a  machine  embodying  a  principle. 
The  case  must  be  considered  as  if  the  principle  being  well 


8  SCIPLE8 

known,  the  plaintiff  had  first  invented  a  mode  of  applying 
it  by  a  mechanical  apparatus  to  furnaces;  and  the  in 
tion  then  consisted  in  this — the  application  of  air  heated 
up  to  red-heat,  or  nearly  so,  and  the  interposition  of  a 
receptacle  for  heating  air  between  the  blowing-apparatus 
and  the  furnace.  And  Mr.  Baron  Aldtrton,  in  reply  to  the 
argument  of  the  plaintiff's  counsel  that  he  claimed  every 
vessel  and  every  shape  of  closed  vessel  in  which  air  could  be 
heated  between  the  blowing-apparatus  and  the  furnace,  said, 
1  Then  I  think  that  is  a  principle,  if  you  claim  every  shape. 
If  you  claim  a  specific  shape,  and  go  to  the  jury  and  say 
that  \\hich  the  other  people  have  adopted  is  a  colourable 
imitation,  then  I  can  understand  it.  If  you  claim  every 
shape,  you  claim  a  principle.  There  is  no  difference  between 
a  principle  to  be  carried  into  effect  in  any  way  you  will, 
and  claiming  the  principle  itself.  You  must  detail  some 
specific  mode  of  doing  it.'  (See  L.  J.  Lindley's  approving 
remarks  on  this  dictum.  Automatic  }]'•  •i<ihin:i  M>i<-hinc  Co. 
v.  Kniffht,  6  R.  P.  C.  808.) 

In  the  same  case  (1  W.  P.  C.  942)  Aldcnon,  B.,  said,  '  I 
take  it  that  the  distinction  between  a  patent  for  a  principle 
and  a  patent  which  can  be  supported  is,  that  you  must 
have  an  embodiment  of  the  principle  in  some  practical  mode, 
described  in  the  specification,  of  carrying  the  principle  into 
actual  effect ;  and  then  you  take  out  your  patent,  not  for 
the  principle,  but  for  the  mode  of  carrying  the  principle  into 
effect.  In  Watt's  patent,  which  comes  the  nearest  to  the 
present  of  any  you  can  suggest,  the  real  invention  of  Watt 
was,  that  he  discovered  that  by  condensing  steam  in  a  sepa- 
rate vessel,  a  great  saving  of  fuel  would  be  effected  by  keeping 
the  steam-cylinder  as  hot  as  possible,  and  applying  the  cool- 
ing process  to  the  separate  vessel,  and  keeping  it  as  cool  as 
possible  ;  whereas  before,  the  steam  was  condensed  in  the 
same  vessel ;  but  then  Mr.  Watt  carried  that  practically  into 
effect  by  describing  a  mode  which  would  effect  the  object.' 

The  words  of  Lord  Justice  Clerk  Hope,  in  the  case  of 
the  Househitt  Company  v.  Xeilson  (1  W.  P.  C.  683),  may  be 
cited  in  reference  to  the  same  point.  '  A  patent  cannot  be 


PEINCIPLES  9 

taken  out  solely  for  an  abstract  philosophical  principle — for 
instance,  for  any  law  of  nature  or  any  property  of  matter, 
apart  from  any  mode  of  turning  it  to  account  in  the  practi- 
cal operations  of  manufacture,  or  the  business,  and  arts, 
and  utilities  of  life.  The  mere  discovery  of  such  a  principle 
is  not  an  invention  in  the  patent-law  sense  of  the  term. 
Stating  such  a  principle  in  a  patent  may  be  a  promulga- 
tion of  the  principle,  but  it  is  no  application  of  the  principle 
to  any  practical  purpose.  And  without  that  application  of 
the  principle  to  a  practical  object  and  end,  and  without  the 
application  of  it  to  human  industry  or  to  the  purposes  of 
human  enjoyment,  a  person  cannot  in  the  abstract  appro- 
priate a  principle  to  himself.  But  a  patent  will  be  good, 
though  the  subject  of  the  patent  consists  in  the  discovery 
of  a  great  general  and  most  comprehensive  principle  in 
science  or  law  of  nature,  if  that  principle  is  by  the  specifi- 
cation applied  to  any  special  purpose,  so  as  thereby  to 
effectuate  a  practical  result  and  benefit  not  previously 
attained.  ...  It  is  no  longer  an  abstract  principle.  It 
comes  to  be  a  principle  turned  to  account  to  a  practical 
object,  and  applied  to  a  special  result.  It  becomes  then 
not  an  abstract  principle,  which  means  a  principle  con- 
sidered apart  from  any  special  purpose  or  practical  obser- 
vation, but  the  discovery  and  statement  of  a  principle  for  a 
special  purpose,  that  is,  a  practical  invention,  a  mode  of 
carrying  a  principle  into  effect.  .  .  .  The  instant  that  the 
principle,  although  discovered  for  the  first  time,  is  stated 
in  actual  application  to,  and  as  the  agent  of,  producing 
a  certain  specified  effect,  it  is  no  longer  an  abstract  prin- 
ciple ;  it  is  then  clothed  with  the  language  of  practical 
application,  and  receives  the  impress  of  tangible  direction 
to  the  actual  business  of  life.' 

Minter's  patent  was  for  an  improvement  in  the  con- 
struction of  chairs,  which  consisted  in  the  application  of  a 
self-adjusting  leverage  to  the  back  and  seat  of  a  chair, 
whereby  the  weight  on  the  seat  acted  as  a  counter-balance 
to  the  pressure  against  the  back.  The  patentee  having 
obtained  a  verdict  at  the  trial  of  an  action  for  the  infringe- 


10  PRINCIPLES 

ment  of  the  patent,  it  was  contended,  on  a  motion  for  a 
nonsuit,  that  the  patentee  had  claimed  a  j  .  and  not 

any  particular  means  of  carrying  the  prin<  i]>l.  into  effect 
Now,  to  a  principle  per  *c  he  was  not  entitled;  and  as 
to  the  particular  means  adopted,  the  defendant  had  not 
borrowed  it.  The  plaintiff,  it  was  further  argued,  had 
attempted  to  appropriate  by  his  specification  one  of 
first  principles  in  mechanics,  viz.  tin-  1.  •,...  But,' said 
Lord  Lyndhurst,  C.  B.t  l  it  is  not  a  leverage  only,  Imt  it  is 
a  self-adjusting  leverage;  and  it  is  not  a  self-adjusting 
leverage  only,  hut  it  is  a  self-adjusting  leverage  producing 
a  particular  effect,  by  means  of  which  the  weight  on  the 
seat  counterbalances  the  pressure  on  the  back  of  a  chair.' 
And  .  .'.'.,  suul, '  Fur  tin-  application  of  a  self-adjusting 

leverage  to  a  chair,  cannot  he  patent  that  ?  He  claims  the 
combination  of  the  two,  no  matter  in  what  shape  or  way 
you  combine  them ;  but  if  you  combine  the  self-adjusting 
leverage,  which  he  thus  applies  to  the  subject  of  a  chair, 
that  is  an  infringement  of  the  patent.'  L«r-i  Lywlhunt 
wuit  on  to  say  that  the  application  of  a  self-adjusting 
leverage  producing  the  effect  constituted  the  machine,  and 
the  patentee  claimed  that  machine,  and  the  right  to  make 
it,  l»y  the  application  of  a  self-adjusting  leverage  producing 
a  particular  effect.  (Minter  v.  1 1".  Kt,  1  \\.  P.  C.  134.) 

Again,  Sir  If.  J'.  If" /,   I".  ('.,  said  in  l><m:i>rri>ltl  v. 

-•  (13  L.  T.  N.  s.  142),  '  If,  having  a  particular  purpose 
in  view,  you  take  the  general  principles  of  mechanics  and 
apply  one  or  other  of  them  to  a  manufacture  to  which  it 
has  never  been  before  applied,  that  is  a  sufficient  ground 
for  taking  out  a  patent,  provided  that  the  Court  sees  that 
which  has  been  invented  is  new,  desirable,  and  for  the 
public  benefit.' 

In  the  case  of  the  Electric  Tdcyrnph  Company  v. 
(10  C.  B.  R.  838)  it  was  argued  that  the  giving  of  duplicate 
signals  at  intermediate  stations  was  not  the  proper  subject 
of  a  patent,  being  an  idea  or  principle  only,  and  not  a  new 
manufacture.  But  it  was  held  by  the  Court,  that  as  the 
patentees  had  not  only  communicated  the  idea  or  principle, 


PKOCESSES  11 

but  showed  how  it  might  be  carried  into  effect,  viz.  by 
appropriate  apparatus  at  each  station,  the  patent  was  valid. 
See  also  the  remarks  upon  this  subject  of  Sir  G.  Jessel, 
M.  R.,  in  the  case  of  Otto  v.Linford  (46  L.  T.  N.  s.  39,  Goodeve 
Patent  Cases,  343). 

PROCESSES. 

It  will  have  been  observed  that  what  the  statute  of  King 
James  excepts  from  the  operation  of  the  invalidating  first 
clause  is  the  privilege  of  the  sole  working  or  making  of  any 
manner  of  new  manufactures.  Now  it  seems  to  have  been 
at  one  time  doubted  whether  a  mere  method  or  process  was 
embraced  by  these  words  of  the  statute.  Perhaps,  said 
Lord  Tenterden,  C.  J.,  in  the  case  of  Rex  v.  Wheeler  (2  B. 
&  A.  350),  the  statute  '  may  extend  to  a  new  process  to  be 
carried  on  by  known  implements,  or  elements  acting  upon 
known  substances,  and  ultimately  producing  some  other 
known  substance,  but  producing  it  in  a  cheaper  or  more 
expeditious  manner,  or  of  a  better  and  more  useful  kind.' 
The  current  of  decision  since  Lord  Tenterden's  time  has 
converted  what  he  put  in  a  doubtful  way  into  a  certainty ; 
for  the  books  are  full  of  cases  which  prove  beyond  a  doubt 
that  a  process  is  patentable.  The  patent  contested  in 
Gibson  v.  Brand  (1  W.  P.  C.  631)  was  for  a  new  or  improved 
process  or  manufacture  of  silk.  Tindal,  C,  J.,  said  that 
there  was  strong  reason  to  suppose  that  a  patent  for  a 
process,  in  the  strict  or  proper  sense  of  the  term,  might  be 
good  in  law.  Such  certainly  was  the  opinion  of  Chief 
Justice  Eyre  in  Boulton  v.  Bull  (1  Carp.  E.  146).  '  It  was 
admitted  in  the  argument  at  the  bar  that  the  word  "manu- 
facture "  in  the  statute  was  of  extensive  signification ;  that 
it  applied  not  only  to  things  made,  but  to  the  practice  of 
making,  to  principles  carried  into  practice  in  a  new  manner, 
to  new  results  of  principles  carried  into  practice.' 

It  has  been  said  that  the  doubt  as  to  whether  a  process 
is  patentable  has  been  needlessly  raised,  and  that  it  is  a 
misuse  of  terms  to  speak  of  a  patentable  process  at  all. 
The  subject-matter  of  the  patent,  it  is  urged,  is  in  reality  a 
manufacture  according  to  a  new  process,  and  this  is  there- 


12  PROCESSES 

fore  a  new  manufacture.  For  example,  in  Crane  v.  Price 
(1  W.  P.  C.  377),  the  Mil.jtrt  of  the  patent  WM,  according 
to  this  view,  the  manufacture  of  iron  by  means  of  a  new 
process,  viz.  the  combination  of  a  hot-air  blast  and  anthra- 
cite in  the  furnace.  In  Gibton  v.  Brand  it  was  the  manu- 
facture of  silk  by  a  new  process. 

We  are  told  by  Sir  F.  Pollock,  C.  It.  (Stercru  v.  K sating, 
2  W.  P.  C.  182),  that '  the  real  invention  may  be,  not  so 
much  the  thing  when  produced,  as  the  mode  in  which  it  is 
produced  ;  and  its  novelty  may  consist,  not  so  much  in  its 
existence  as  a  new  substance,  as  in  its  being  an  old  sub- 
stance, but  produced  by  a  different  process.  In  one  sense, 
an  old  substance  produced  by  a  new  process  is  a  new 
manufacture  ;  of  that  there  cannot  be  a  doubt ;  and  there- 
fore, although  the  language  of  the  Act  has  been  said  to 
apply  only  to  manufactures  and  not  to  processes,  when  you 
come  to  examine,  either  literally,  or  even  strictly,  it  appears 
to  me  the  expression  "  manufacture  "  is  free  from  objection, 
because,  though  an  old  thing,  if  made  in  a  new  way,  the 
very  making  of  it  in  a  new  way  makes  it  a  new  manufac- 
ture. Therefore,  although  I  think  this  is  a  patent  for  the 
process  rather  than  the  product,  I  think  it  may  be  a  pa 
for  the  product.' 

Allowing  this  explanation  its  full  force,  it  will  not  ex- 
tt-nd  to  many  cases  wherein  it  has  been  decided  that  bare 
processes  are  patentable,  or  to  cases  where  patents  for 
mere  applications  have  been  supported.  For  example,  in 
Forsyth  v.  H'n-i.rc  (1  Carp.  Rep.  401),  the  application  of  a 
known  detonating  powder  to  the  discharge  of  known  kinds 
of  fire-arms  was  held  to  be  a  patentable  invention.  But 
how  could  this  be  a  manufacture  in  the  ordinary  meaning 
of  the  word?  Again,  in  the  case  of  If<irtl>>j' 
(1  W.  P.  C.  54),  it  was  held  that  the  application  of  metal 
plates,  made  in  the  ordinary  way,  to  ships  and  buildings, 
with  the  view  of  protecting  them  against  fire,  by  preventing 
the  access  of  air,  was  a  patentable  invention.  Again,  in 
the  case  of  the  Electric  Telegraph  Company  v.  Brett  (10 
C.  B.  B.  838),  a  method  of  giving  duplicate  signals  at 


PROCESSES  13 

intermediate  stations  was  held  to  be  properly  the  subject  of 
a  patent.  In  none  of  these  cases  was  any  new  substance 
produced,  nor  any  new  machinery  employed.  '  Most  cer- 
tainly the  exposition  of  the  statute,  as  far  as  usage  will 
expound  it,  has  gone  very  much  beyond  the  letter '  (Eyre, 
C.  J.,  in  Boulton  v.  Bull,  1  Carp.  E.  146) ;  and  Lord  Chief 
Justice  TindaVs  remarks  in  Cornish  v.  Keene  (1  W.  P.  C. 
508)  show  the  latitude  of  interpretation  which  is  given  to 
the  word  '  manufactures '  in  the  Act  of  Parliament.  '  It 
has  a  very  wide  and  extended  meaning.  You  may  call  it 
almost  invention.'  Again,  Coleridge,  J.,  said,  in  Bush  v. 
Fox  (Macr.  P.  C.  176),  manufacture  includes  both  process 
and  result.  And  in  Ralston  v.  Smith  (11  H.  L.  C.  223), 
Lord  Westbury  said,  '  By  the  large  interpretation  given  to 
the  word  "manufacture,"  it  not  only  comprehends  produc- 
tions, but  it  also  comprehends  the  means  of  producing 
them.  Therefore,  in  addition  to  the  thing  produced  it  will 
comprehend  a  new  machine,  or  a  new  combination  of 
machinery  ;  it  will  comprehend  a  new  process  or  an  im- 
provement of  an  old  process.' 

In  Newall  v.  Elliott  (13  W.  E.  11)  the  patent  was  for 
'  improvements  in  apparatus  employed  in  laying  down 
submarine  telegraph  wires ; '  and  the  specification,  after 
describing  the  apparatus,  concluded  with  the  following 
claim : — '  First,  coiling  the  wire  or  cable  round  a  cone ; 
secondly,  the  supports  placed  cylindrically  outside  the  coil 
round  the  cone ;  thirdly,  the  use  of  the  rings  in  combina- 
tion with  the  cone  as  described.'  It  was  objected  that  the 
invention  thus  claimed  was  merely  a  mode  of  coiling  and 
paying  out  cables,  and  was  not  a  new  manufacture,  and 
could  not,  therefore,  be  the  subject-matter  of  a  patent. 
The  Court,  however,  over-ruled  the  objection,  and  held  the 
patent  valid. 

Previous  to  the  patent  granted  to  Wallington,  gelatine 
had  been  made  by  submitting  large  pieces  of  hide  to  the 
action  of  caustic  alkali,  and  by  employing  blood  to  clarify 
the  product.  Wallington's  process  consisted  in  cutting 
the  hides  into  thin  slices,  and  the  use  of  blood  was  unneces- 


14  CLASSES  OF  INVENTIONS 

sary.    This  was  held  to  be  a  pat  en  table  invention. 
n  v.  Dale,  7  Exch.  Rep.  888.) 


CLASSES  OF   PATEXTABLE   IXVEXT1 

The  in vint ions  for  which  valid  patents  have  been 
granted  may  be  roughly  divided  into  the  following 
classes: — 

1.  .Vfic  contrivances  applied  to  new  objects  or  purposes t 

a  ml  i/ifliliii<i  new  remits. 

2.  Neic  contrii-iinr,-*  <i]i]>li«l  to  old  objects  or  purposes. 
8.  New  combinations  of  old  parts,  or  of  old  a 

parts,  the  subject- matter  consist'  r  of  material  • 

<•/"  tnfclninii'ul  processes. 

1.  New  methods  of  applfi'unj  >in  oil  //<«//</. 

5.  Chctni'-iil    processes,   sometimes   in   combinnt< 
tin  ,-lia nirnl  i-ontrifunces. 

The  reader  may  like  to  have  some  illustrations  of  these 
classes  of  inventions,  and  we  shall  proceed  to  offer  the 
following  :— 

1.  \iiccuntrii-iinctn  tipplinl  to  new  objects  or  purposes. 
Several  modern  inventions  of  great  commercial  or  social 
importance  would  fall  under  this  head.    Amongst  them  are 
conspicuous — Apparatus  to  be  worked  by  electricity  for 
transmitting  messages  from  place  to  place  on  land ;  wire 
cables  for  transmitting  messages  by  the  aid  of  electricity 
across  the  ocean ;  telephonic  apparatus  for  transmitting 
words  from  the  mouth  of  a  speaker  to  the  ear  of  a  listener 
at  a  distance ;  the  art  of  photography ;  the  art  of  electro- 
plating.   All  these  have  been  invented  and  made  wonderful 
progress  within  the  recollection  of  many  persons  now  li . 

2.  A  new  contrivance   employed  to   effect  a  well-known 
inject — to  make,  for  instance,  an  article  previously  made 
in  a  different  way — is  also  patentable,  provided  that  the 
new  contrivance  is  attended  with  some  degree  of  utility ; 
for  example,  that  it  accomplishes  the  result  more  rapidly, 
efficiently,  or  cheaply  than  the  old  contrivance.     '  There 
may  be  a  valid  patent '  (said  Lord  Ellm  in  Hill  v.  Thomp- 
son, 1  W.  P.  C.  237)  '  for  a  new  combination  of  materials 


CLASSES  OF  INVENTIONS  15 

previously  in  use  for  the  same  purpose,  or  for  a  new 
method  of  applying  such  materials.' 

Again,  where  an  invention  effects  a  known  purpose  with 
new  materials,  it  will  be  held  a  patentable  process.  Thus, 
Binney  obtained  a  patent  for  the  manufacture  of  packing 
for  the  joints  of  steam-engines.  Feltmann  afterwards 
obtained  a  patent  for  the  same  object,  but  he  employed 
different  materials  for  the  packing  stuff.  The  later  patent 
was  held  to  be  good  for  a  new  process.  (Binney  v.  Feltmann, 
1  Griff,  P.  C.  50.) 

A  process  by  which  a  product  is  directly  obtained  when 
the  old  method  of  obtaining  it  was  indirect  may  form  the 
subject  of  a  patent.  Thus,  it  was  held  in  Booth  v.  Kennard 
(1  H.  &  N.  527),  that  to  obtain  gas  by  the  direct  distillation 
of  oleaginous  seeds  was  a  patentable  invention,  although 
gas  had  been  previously  obtained  by  the  distillation  of  oil 
expressed  from  oleaginous  seeds. 

8.  A  new  combination  of  known  parts  or  old  processes 
producing  a  new  result,  or  producing  an  old  result  in  a 
more  economical  manner  or  more  perfect  form,  whereby 
articles  cheaper  or  better  than  had  ever  before  been  pro- 
duced are  rendered  accessible  to  the  public,  will  be  held  a 
meritorious  and  patentable  invention.  It  was  held  in  Crane 
v.  Price  (1  W.  P.  C.  408)  that  the  combination  of  the  hot- 
air  blast  with  stone  coal  in  the  smelting  of  iron  (the  hot-air 
blast  and  stone  coal  having  been  separately  in  use  before, 
but  the  combination  being  previously  unknown)  was  an 
invention  intended  by  the  statute,  and  such  as  might  well 
become  the  subject  of  a  patent.  It  was  said  by  Tindal,  C.  J., 
that  there  were  numerous  instances  of  patents  where  the 
invention  consisted  in  no  more  than  in  the  use  of  things 
already  known,  and  acting  with  them  in  a  manner  already 
known,  and  producing  effects  already  known,  but  producing 
those  effects  so  as  to  be  more  economically  or  beneficially 
enjoyed  by  the  public. 

That  the  novel  combination  of  old  parts  having  a  useful 
result  may  form  the  subject  of  a  valid  patent  has  been 
again  and  again  decided.  (Lister  v.  Leather,  8  E.  and  B. 


16  CLASSES  OP  INVENTIONS 

1004  ;  Xficall  \.  Kliintt,  10  Jur.  N.  s. '.»:,  I  ;  8.  t7.ll  \V.  II.  1 1  ; 
Murr-t'i  v.  cl'itit.'ii,  L.  It.  7  C.  570;  Canmngton  v.  \ntttill, 
L.  R.  :•  II.  I..  -20:, :  E  /  v.  n.tmiit..'  .  i  «,  itlin  P.  C. 

115.)  '  If  there  be*  (said Lord  Wettbttni  in  Spencer  v.  Jack, 
8  De  G.  J.  &  8.  846)  '  a  combination  of  several  things  pre- 
viously well  known,  which  combination  is  attended  with 
such  results  of  utility  and  advantage  to  tin  j.ul.li.-  tlmt  the 
combination  itself  is  rightly  denominated  a  substantial  im- 
provement, it  is  impossible  to  deny  that  that  is  the  subject 
of  a  patent.'  See  further  as  to  combinations  in  the  chapter 
on  the  Complete  Specification. 

A  new  combination  of  processes  may  even  consist  of  an 
old  combination  with  the  omission  of  one  of  the  old  pro* 
noaion,  provided  that  some  degree  of  invention  has  been 
manifested  in  arriving  at  the  new  combination  or  process. 
Thus  in  the  case  of  Rmtell  v.  Cowley  (1  W.  P.  C.  459)  a 
patent  had  been  obtained  for  an  invention  for  manufacturing 
iron  tubes,  by  welding  them  without  the  use  of  a  mamln-1, 
or  internal  support ;  and  its  validity  being  contested,  it  was 
held  good.  Lord  Lyndhurst  read  the  specification  as  claiming 
only  the  manufacture  of  tubes  without  a  mandrel.  By  the 
new  process,  tubes  could  be  made  of  greater  length,  of 
greater  uniformity,  and  considerably  cheaper,  than  before. 

But  the  combinations  for  which  patents  are  obtained 
frequently  consist  not  only  of  old  parts,  but  to  some  extent 
of  new  parts,  which  are  themselves  minor  inventions  and 
may  be  protected  as  such.  If  any  one  of  the  parts  is  new, 
it  follows  that  the  entire  combination  is  new  too. 

The  introduction  into  an  old  combination  of  a  new  shape 
of  one  of  the  old  elements  of  that  combination,  which  new 
shape  invokes  a  physical  law  otherwise  left  on  one  side 
(e.g.  employing  a  filament  of  carbon  instead  of  a  thick  rod 
in  an  incandescent  electrical  lamp),  is  a  good  subject  for  a 
patent.  (Edison  d~  Sicnn  I'nited  Electric  Light  Co.  \.  Wood- 
home  (first  action),  4  R.  P.  C.  98.) 

4.  A  new  mode  of  applying  a  /.;i«»  /i  thing  may  be  the 
subject  of  a  pat<  nt,  provided  that  some  ingenuity,  gome  novelty, 
it  exhibited  in  the  mode  of  making  that  application,  and  that 


CLASSES  OF  INVENTIONS  17 

the  application  is  attended  by  some  useful  result.  (See  the 
section  on  Applications  in  Chapter  V.)  In  Watt's  patent 
for  a  new  method  of  lessening  the  consumption  of  steam 
and  fuel  in  steam-engines,  the  enclosing  of  the  cylinder  in 
a  case  of  wood,  or  any  other  material  that  transmits  heat 
slowly,  was  claimed,  and  allowed  to  be  a  patentable  inven- 
tion. (Boulton  v.  Bull,  2  H.  Bl.  463,  1  Carp.  117.)  In 
Forsyth's  patent  for  a  method  of  discharging  fire-arms,  the 
patentee  claimed  the  use  and  application  of  certain  known 
fulminating  compounds  for  this  purpose.  It  was  contended 
that,  since  the  properties  of  detonating  powder  were  well 
known  for  other  purposes,  the  using  of  such  materials  to 
discharge  fire-arms  was  not  a  new  manufacture  for  which  a 
patent  could  be  supported.  But  Abbott,  C.  J.,  stated  that 
if  the  invention  (i.e.  this  particular  application  of  detonating 
powder)  were  new,  it  was  such  a  one  as  might  be  secured 
by  patent.  The  jury  having  found  the  invention  to  be  a 
new  one,  the  patentee  had  a  verdict.  (Forsyth  v.  Riviere, 
1  Carp.  404.) 

Charcoal  had  been  used  in  refining  sugar  previously  to 
Derosne's  patent ;  but  the  old  method  was  to  mix  charcoal 
powder  with  the  syrup,  and  the  new  was  to  pass  the  syrup 
through  beds  of  charcoal  constructed  in  a  particular  manner. 
By  the  old  process  a  considerable  quantity  of  charcoal  was 
taken  up  by  the  syrup,  and  this  was  an  injury  to  the  sugar. 
In  Derosne's  process  this  objection  did  not  arise ;  and, 
moreover,  it  was  applicable  not  only  to  the  refinement  of 
coarse  sugar,  but  to  the  original  manufacture  of  sugar  out 
of  cane-juice.  In  an  action  brought  for  infringing  the 
patent,  the  originality  of  the  invention  was  held  not  to  be 
impeached  by  showing  that  there  had  been  an  earlier  use 
of  charcoal  in  the  refinement  of  sugar.  No  evidence  was 
given  that  any  other  person,  before  the  date  of  the  plaintiff's 
patent,  ever  applied  in  use  the  particular  mode  of  filtering 
syrup  which  the  patent  was  intended  to  introduce  :  and  in 
the  absence  of  such  evidence,  LordAbinger  directed  the  jury 
to  find  for  the  plaintiff.  (Derosne  v.  Fairie,  1 W.  P.  C.  154.) 

In  the  case  of  Cornish  v.  Keene  (I  W.  P.  C.  517)  a  patent 
for  improvements  in  the  manufacture  of  elastic  fabrics  was 


18  CLASSES  OF  INVENTIONS 


IM!<  nt.  -  '.-  in...  I    ,,f  ,  :V.  ,-rin.:  hi- 
by  intm.lut  ing  into  the  fial  IH  of  india-rubber,  coated 

with  filamentous  material  and  applied  as  warp  or  weft,  or 
as  both,  according  to  the  direction  of  the  elasticity  required 
—  the  india-rubber  threads  having  been  stretched  to  their 
utmost  tension  and  rendered  non-elastic  before  being  ii 
duced  into  the  fabric,  and  then  being  rendered  elasti 
tli-    application  of  heat.    It  was  contended  that  this  was 
ii'-it  1  v  manufacture,  nor  an  improvement  of  an  old 

manufacture,  I  nit  was  merely  the  application  of  a  known 
material,  in  a  known  manner,  to  a  purpose  known  b< 
'  That  it  is  a  manufacture  '  (said  Tindal,  C.  •/.,  <!• 
the  judgment  of  the  Court)  '  can  admit  of  no  doubt  ;  it  is  a 
vendible  article,  produced  by  the  hand  and  art  of  man. 
Whether  it  is  new  or  not,  or  whether  it  is  an  improvement 
of  an  old  manufacture,  was  one  of  the  questions  for  tlu 
jury,  upon  the  evidence  before  them  ;  but  that  it  came 
within  the  description  of  a  manufacture,  and  so  far  is  an 
invention  which  may  be  protected  by  a  patent,  we  feel  no 
doubt  whatever.  The  materials,  indeed,  are  old,  and  have 
been  used  before  ;  but  the  combination  is  alleged  to  be,  and, 
if  the  jury  are  right  in  their  finding,  is,  new  ;  and  the  result 
or  production  is  equally  so.  The  use  of  elastic  threads  or 
strands  of  india-rubber,  previously  covered  by  filaments 
wound  round  them,  was  known  before  ;  the  use  of  yarns  of 
cotton,  or  other  non-elastic  material,  was  also  known  before  ; 
but  the  placing  them  alternately  side  by  side  together  as 
a  warp,  and  combining  them  by  means  of  a  weft  when  in 
extreme  tension,  and  deprived  of  their  elasticity,  appears 
to  be  new  ;  and  the  result,  viz.,  a  cloth  in  which  the  non- 
elastic  threads  form  a  limit  up  to  which  the  elastic  threads 
may  be  stretched,  but  beyond  which  they  cannot,  and  tl 
fore  cannot  easily  be  broken,  appears  a  production  altogether 
new.  It  is  a  manufacture  at  once  ingenious  and  simple.' 

A  patent  was  granted  for  an  improved  mode  of,  and 
apparatus  for,  bending  wood  for  the  handles  of  walking- 
sticks,  &c.,  and  the  specification  described  the  apparatus  as 
being  a  vice  for  holding  a  stick,  previously  softened  in  moist 
sand,  placed  close  to  a  hollow  mandrel,  on  which  the  bend- 


CLASSES  OF  INVENTIONS  19 

ing  was  effected  by  sending  a  jet  of  lighted  gas  into  it,  and 
then  securing  the  stick  on  the  mandrel  by  a  strip  of  steel. 
The  heat  stiffened  the  fibres  of  the  wood,  and  the  curvature 
was  rendered  permanent.  In  a  suit  to  restrain  the  de- 
fendants from  infringing  the  patent,  its  validity  was  called 
in  question,  on  the  ground  that  the  invention  was  not  new; 
but  Sir  W.  P.  Wood,  V.  C.,  granted  the  injunction,  saying, 
*  "When  it  is  stated  that  because  wood  is  bent  by  coach- 
makers  and  others  in  a  variety  of  ways  by  the  application 
of  heat,  you  cannot  have  a  patent  for  the  application  of 
heat  to  the  bending  of  walking-sticks,  that  is  the  same  sort 
of  reasoning  that  was  pressed  on  the  Court  with  reference 
to  an  invention  for  an  improvement  on  navigation.  It  was 
said  that  the  operation  of  a  propelling  power  by  presenting 
a  screw-propeller  to  the  action  of  water  was  nothing  new — 
that  it  was  like  the  action  of  a  windmill  with  reference  to 
the  wind.  That  reasoning,  however,  did  not  succeed.' 
(Dangerftcld  v.  Jones,  13  L.  T.  N.  s.  142.) 

5.  Chemical    processes,   sometimes   in   combination   with 
mechanical  contrivances,  whereby  something  useful  is  pro- 
duced or  effected.     Under  this  head  the  following  examples 
may  be  given  :  the  distillation  of  bituminous  minerals  for 
the  production  of  illuminating  and  lubricating  oils  (Young 
y.  Fernie,  4  Giff.  597) ;  the  purification  of  coal  gas  by  means 
of  oxides,  chlorides,  &c.  (Hills  v.  London  Gas  Light  Com- 
pany, 5  H.  &  N.  312) ;  the  precipitation  of  the  solid  animal 
and  vegetable  matter  contained  in  sewage  water  with  a  view 
to  its  employment  as  manure  (Higgs  v.  Goodwin,  E.  B.  &E. 
529) ;  the  preparation  of  dyeing  materials  (Steiner  v.  Heald, 
6  Exch.  607  ;  Simpson  v.  Holliday,  5  N.  E.  340,  L.  E.  1  H.L. 
315 ;  Badische  Anilin  und  Soda  Fabrik  v.  Levinstein,  4  E.  P.  C. 
449) ;  the  electro-deposition  of  nickel  (The  Plating  Co.  v. 
Farquharson,  I  Griffin,  P.  C.  187) ;  the  manufacture  of  alum 
(Kurtz  v.  Spence,  5  E.  P.  C.  161)  ;  the  mixture  of  two  or 
more  substances  in  certain  definite  proportions  forming  a 
compound  substance  useful  for  its  preservative,  sanitary,  or 
other  useful  properties  (Bewley  v.  Hancock,  6  De  G.  M.  &  G. 
402  ;  Muntz  v.  Foster,  2  W.  P.  C.  103  ;  Bailey  v.  Roberton, 
L.E.3App.  Ca.  1055). 

c  2 


20  CLASSES  OF  INVENTIONS 

Many  substances  have  been  produced  by  chemists  in 
their  laboratories  in  small  quantiti-  s.  \\liirh,  if  tin  y  could 
be  produced  in  large  quantities  at  a  moderate  coat,  so  as  to 
be  merchantable  commodities,  would  be  extensively  used  by 
the  public.  An  inventor  who  succeeds  in  doin^  this  \\ill 
not  be  considered  to  have  been  forestalled  because  the  sub- 
stance has  been  already  produced  on  a  small  scale  as  a 
chemical  curiosity.  He  will  be  held  to  have  1-  <  u  tin-  true 
and  first  inventor,  and  his  patent  will  be  supported  because 
he  has  discovered  a  method  of  making  for  sale  an  arti<  1« 
useful  to  the  public,  and  has  thereby  created  a  new  manu- 
facture. '  What  the  law  looks  to,'  said  V.  C.  Stuart,  in  the 
case  of  Young  v.  Fernie  (4  Giff.  611),  '  is  the  inventor '  and 
discoverer  who  finds  out  and  introduces  a  manufacture 
which  supplies  the  market  for  useful  and  economical  pur- 
poses with  an  article  which  was  previously  little  more  than 
the  ornament  of  a  museum.  The  plaintiff  is  an  inventor  of 
this  class,  and  his  patent  is  entitled  to  the  protection  of  the 
law.  I  find  that  he  has  ascertained  by  a  course  of  laborious 
experiment  a  particular  class  of  materials  among  many,  and 
a  particular  process  among  many,  which  has  enabled  him 
to  create  and  introduce  to  the  public  a  useful  manufacture, 
which  amply  supplies  the  market  with  that  which,  until  tin- 
use  of  the  materials  and  processes  and  temperature  indi- 
cated by  him,  had  never  been  supplied  for  commercial 
purposes.  At  the  date  of  his  patent  something  remained 
to  be  ascertained  which  was  necessary  for  the  useful  appli- 
cation of  the  chemical  discovery  of  paraflfine  and  paraffine 
oil.  This  brings  it  within  the  principle  stated  by  Lord 
Westbury,  C.,  in  the  case  of  Hills  v.  Evans  (4  De  G.  F.  and 
J.  288).  The  manufacture  with  the  materials  and  process 
indicated  by  him,  according  to  the  sense  in  which  I  under- 
stand the  word  "  manufacture  "  to  be  used  in  the  statute, 
was  a  new  manufacture  not  in  use  at  the  date  of  his  patent/ 

1  The  inventor  in  this  case  was  referred  to  by  Professor  Huxley,  P.R.S., 
in  his  Anniversary  Address  to  the  Royal  Society  1883,  as  '  Mr.  James  Young, 
a  chemist  whose  skilful  application  of  theory  to  practice  yielded  him  a 
colossal  fortune.' 


UTILITY  21 


CHAPTER  III. 

THE    INCIDENT    OF    UTILITY. 

THE  two  chief  incidents  which  are  required  by  law  to  attend 
every  invention  that  claims  the  protection  of  a  patent  are 
Utility  and  Novelty. 

If  one  of  several  heads  of  invention  is  useless  the  patent 
is  void  (Morgan  v.  Seivard,  2  M.  &  W.  544  ;  Simpson  v. 
Holliday,  L.  R.  1  H.  L.  315 ;  Templeton  v.  Macfarlane, 
1  H.  L.  C.  595).  And  if  part  of  an  invention  is  found  to 
be  meritorious  and  part  useless,  the  patent  is  likewise  void 
(United  Horsenail  Co.  v.  Stewart,  2  R.  P.  C.  132). 

A  patent  for  a  useless  invention  is  thought  by  some 
to  be  void  at  common  law ;  by  others,  by  force  of  the 
Statute  of  Monopolies,  which  renders  void  grants  of  privi- 
leges which  tend  to  the  hurt  of  trade,  or  are  generally 
inconvenient.  For  if  a  monopoly  were  allowed  in  a  useless 
invention,  other  persons  would  be  prevented  from  improv- 
ing it,  or  turning  it  to  any  account  whatever,  so  that  com- 
binations of  utility  might  be  impeded.  It  would  stand  in 
the  way  of  real  inventors,  and  hence  be  mischievous  to  the 
public  generally.  (See  the  observations  of  Parke,  B.,  in 
Morgan  v.  Seicard,  1  W.  P.  C.  196.)  On  the  trial  of  Palmer  v. 
Wagstaff  (Newton's  Lond.  Journ.  vol.  xliii.  p.  151),  Chief 
Baron  Pollock  said  that  in  legal  language  it  is  a  fraud  on 
the  law  of  patents  for  any  person  to  take  out  a  patent  with 
a  view  to  the  obstruction  of  improvements.  The  evidence 
showed  that  the  plaintiff's  patent,  which  it  was  alleged  the 
defendant  had  infringed,  had  never  been  worked ;  no  attempt 
had  been  made  to  bring  the  candles  of  the  patented  con- 
struction before  the  public ;  and  the  patent  was  only  then 
brought  into  play  for  the  purpose  of  stopping  the  defendant 
from  a  course  of  improvement. 


•JU  UTILITY 

*  A  patent  for  an  invention  which  is  merely  to  obstruct 
every  subsequent  improvement,  which  is  to  step  in  and 
prevent  the  exercise  of  the  ingenuity  of  mankind  and  the 
introduction  of  otlur  inventions  adapted  to  the  particular 
subject  to  which  the  invention  may  be  applicable,  cannot, 
in  my  judgment,  be  supported.'  (Per  Pollock,  C.  I:.,  in 
Crouley  v.  7'  lacr.  P.  C.  240.) 

It  is  to  be  observed  that  the  recital  in  the  Letters  Patent 
of  the  Crown's  willingness  '  to  encourage  all  inventions 
which  may  be  for  the  public  good '  clearly  points  to  the 
quality  of  utility  as  one  of  the  considerations  for  the  grant, 
which  failing,  the  patent  will  be  invalid. 

If  an  invention  contains  no  degree  of  usefulness  what- 
ever, over  and  above  inventions  already  known,  then  the 
patent  is  void.  (Manton  v.  Parker,  Dav.  P.  C.  827 ;  W. 
P.  C.  192  n.  ;  Mnnton  v.  Manton,  Dav.  P.  C.  348.) 

'A  mere  trifling  matter '  (said  Sir  Jr.  /'.  H'.W,  I".  C., 
in  Dangerfield  v.  Jones,  18  L.  T.  N.  s.  142)  'or  a  thing  of 
no  value  will  not  do,  inasmuch  as  the  whole  theory  of  the 
patent  law  is  based  upon  the  assumption  that  it  is  some- 
thing of  real  value.  You  must  show  that  you  have  invented 
something  useful,  a  new  and  useful  improvement  in  manu- 
facture.' 

It  is  a  fatal  objection  to  a  patent  that  the  invention  as 
put  into  practice  in  the  only  way  described  in  the  specifica- 
tion is  not  only  useless,  but  dangerous.      (Easterbr« 
Great  Western  Railway  Co.,  2  R.  P.  C.  207.) 

1  In  (patent)  law  utility  means  an  invention  better  than 
the  preceding  knowlege  of  the  trade  as  to  a  particular  fabric. 
It  does  not  mean  abstract  utility.  ...  If  there  is  any  new 
point  of  utility  in  the  invention  which  was  not  in  any  pre- 
vious known  thing,  then  you  may  say  it  is  useful ;  but  if 
you  think  it  is  not  as  good  as  those  existing  before,  or  no 
better  than  those  existing  before  in  any  particular  point, 
then  you  would  say  it  was  not  useful.'  (Mr.  Justice  Grove 
to  the  jury  in  Young  v.  Rosenthal,  1  R.  P.  C.  41.) 

When  an  action  is  tried  before  a  jury,  it  is  for  them,  not 
the  Court,  to  decide  the  question  of  utility  when  the  point 


UTILITY  23 

has  been  raised  by  appropriate  pleadings ; l  and  the  question 
will  go  before  them  in  the  general  shape  of  utility  or  no 
utility.  They  have  not  to  consider  to  what  extent  the  in- 
vention is  useful,  but  only  whether  it  is  of  any  use  at  all. 
Mr.  Baron  Parke,  in  Neilson  v.  Harford  (1  W.  P.  C.  314), 
speaking  of  a  patent  for  the  use  of  hot-blasts  in  furnaces, 
laid  it  down  that  if  the  apparatus  were  an  improvement,  so 
as  to  be  productive,  practically,  of  some  beneficial  result, 
no  matter  how  great,  provided  it  is  sufficient  to  make  it 
worth  while  (the  expense  being  taken  into  consideration) 
to  adapt  such  an  apparatus  to  the  ordinary  machinery  in 
all  cases  of  forges,  cupolas,  and  furnaces,  where  the  blast  is 
used,  then  that  there  would  be  utility  sufficient  to  support 
the  patent.  The  quantum  of  improvement  (should  an  im- 
provement be  in  dispute)  is  not  a  material  point ;  it  is  enough 
that  they  can  find  any  improvement.  (Alderson,  B.,  in 
Morgan  v.  Seward,  I  W.  P.  C.  172,  186.)  In  other  words, 
in  order  to  quash  a  patent  on  this  ground,  a  jury  must 
expressly  find  that  the  invention  is  of  no  use. 

It  has  been  decided  over  and  over  again  that  the  slightest 
amount  of  utility  is  sufficient  to  sustain  a  patent.  (Per  Mr. 
Justice  Grove  in  Philpot  v.  Hanbury,  2  E.  P.  C.  37.) 

But  it  must  be  kept  in  mind  that  it  is  the  invention  which 
is  required  to  possess  utility,  not  merely  the  thing  produced. 
As  Pollock,  C.  B.,  remarked,  on  trying  the  case  of  Palmer 
v.  Wagstaff  (above  cited),  it  is  not  sufficient  for  the  main- 
taining of  a  patent  to  prove  that  the  article  produced  under 
it  is  useful ;  it  must  be  the  invention  that  effects  the  utility. 
Thus  a  patented  manufacture  should  be  either  better  in 
quality,  or  cheaper  in  cost,  than  that  which  it  is  intended 
to  supplant. 

It  was  held,  however,  in  the  case  of  Lewis  v.  Marling 

1  That  the  patentee  must  go  into  proof  of  the  utility  of  his  invention,  in 
case  that  issue  is  raised,  is  shown  by  what  fell  from  the  judges  in  the  cases 
of  Eex  v.  ArJcwright,  Dav.  P.  C.  138 ;  Manton  v.  Parker,  Dav.  P.  C.  327  ; ; 
Manton  v.  Manton,  Dav.  P.  C.  333 ;  Bovill  v.  Moore,  Dav.  P.  C.  399 ;  Brunton 
v.  Hawkes,  4  B.  &  Aid.  541 ;  Eussell  v.  Cowley,  1  W.  P.  C.  467 ;  Hill  v. 
Thompson,  1W.  P.  C.237;  Winter  v.  Wells,  1  W.  P.  C.  129;  Crone  v.  Price, 
1  W.  P.  C.  411 ;  Derosne  v.  Fairie,  5  Tyr.  393 ;  2  Cr.  M.  &  B.  476. 


•J4  UTII 

(1 W.  P.  G.  490)  that  the  uselewneas  of  part  of  an  invc 
will  not  vitiate  the  patent,  unless  that  part  is  described  as 
something  essential.  The  case  arose  out  of  a  patent  for  an 
unproved  machine  for  shearing  woollen  cloths,  in  which  tin- 
claimed,  amongst  other  things,  the  use  of  a  brush 
for  raising  the  wool  on  the  surface  of  the  cloth  to  be  ul. 
but  not  as  an  essential  part  of  the  machine.  Before  any 
machine  was  made  for  sale  this  part  of  th«  im«  ntion  was 
discovered  to  be  useless,  and  no  machines  were  ever  sold 
vitli  tin-  hrush  attached.  It  was  contended  that  this  use- 
'  It  saness  of  part  vitiated  the  whole,  but  Lor</  T-nt.t.i.n  said, 
'  If  the  patentee  mentions  that  as  an  essential  ingredient  in 
the  patent  article  which  is  not  so,  nor  even  useful,  and 
whereby  he  misleads  the  public,  his  patent  may  be  '. 
hut  it  would  be  very  hard  to  say  that  this  patent  should  be 
void,  because  the  plaintiffs  claim  to  be  the  inventors  of  a 
certain  part  of  the  machine  not  described  as  essential,  and 
which  turns  out  not  to  be  useful.'  Bayley,  J.,  thought 
that  if  the  patentee  had  known  the  brush  to  be  unnecessary, 
the  patent  would  be  bad,  on  the  ground  that  this  was  a  de- 
ception ;  but  if  he  believed  it  to  be  proper,  and  only  by  a 
subsequent  discovery  found  out  that  it  was  not  necessary, 
it  would  form  no  ground  of  objection. 

In  the  case  of  llnicorth  \.  llanicastle  (1  W.  P.  C.  480) 
the  jury  found  specially  that  the  invention  was  useful  upon 
the  whole,  but  that  the  machine  was  not  useful  in  some 
cases.  The  judges  of  the  court  of  C.  P.  thought  that  this 
finding  of  the  jury  did  not  negative  the  utility  of  the  machine 
in  the  generality  of  cases,  but  rather  led  to  the  inference 
that  in  the  generality  of  cases  it  was  useful,  and  the  patent 
was  therefore  held  to  be  valid. 

If  an  improvement  of  the  trade  (using  these  words  in 
their  commercial  sense)  has  taken  place  in  consequence  of 
an  invention,  this  affords  a  good  test  of  its  utility.  The 
invention  patented  by  Lord  Dudley  consisted  in  substi- 
tuting pit-coal  for  charcoal  in  the  manufacture  of  iron. 
Neilson  patented  a  process  of  smelting  iron  by  blowing  the 
furnace  with  hot  in  place  of  cold  air.  Crane  smelted  iron 


UTILITY  25 

by  means  of  anthracite  instead  of  ordinary  fuel,  and  com- 
bined the  hot-blast  with  this.  All  these  processes  were 
productive  of  great  improvements  in  the  manufacture  of 
iron,  and  the  patents  were  all  supported  by  the  Courts. 

It  is  a  proof  of  utility  that  an  article  of  commerce  com- 
mands an  extensive  sale  within  a  short  time  of  the  first 
manufacture  and  sale.  It  is  also  cogent  but  not  conclusive 
evidence  of  novelty.  (American  Braided  Wire  Co.  v.  Thom- 
son, 5  E.  P.  C.  113 ;  Ehrlich  v.  Ihlee,  5  K.  P.  C.  198  ;  S.  C. 
on  App.  5  E.  P.  C.  437.) 

It  does  not,  however,  follow  necessarily  that  a  patent  is 
bad  because  the  invention  is  not  commercially  useful.  (Per 
Mr.  Justice  North  in  United  Telephone  Co.  v.  Bassano, 
3  E.  P.  C.  313 ;  and  see  Ehrlich  v.  Ihlee,  5  E.  P.  C.  450.) 

The  element  of  commercial  pecuniary  success  has  no 
relation  to  the  question  of  utility  in  Patent  Law  gene- 
rally, though  where  the  question  is  of  improvement,  by 
reason  of  cheaper  production,  such  a  consideration  is  of 
the  very  essence  of  the  patent  itself,  and  the  thing  claimed 
has  not  really  been  invented  unless  that  condition  is  ful- 
filled. (Badische  Anilin  und  Soda  Fabrik  v.  Levinstein, 
House  of  Lords,  4  E.  P.  C.  462.)  And  in  the  same  case 
(p.  466)  Lord  Herschell  said  :  '  I  do  not  think  that  it  is  a 
correct  test  of  utility  to  enquire  whether  the  invented  pro- 
duct was  at  the  time  of  the  patent  likely  to  be  in  commercial 
demand  or  capable  of  being  produced  at  a  cost  which  would 
make  it  a  profitable  speculation  to  manufacture  it.'  (See 
also  Kurtz  v.  Spence,  5  E.  P.  C.  182.) 

It  has  been  said  from  the  Bench,  that  the  fact  of  a 
published  invention  not  meeting  with  public  acceptance  is 
some  presumption  against  its  utility.  It  is  something  to 
be  taken  into  consideration,  when  the  question  of  utility  is 
raised  in  a  court  of  justice,  that  a  machine  has  not  been 
called  for  by  the  public.  (Morgan  v.  Seward,  1  W.  P.  G. 
186.) 

But  the  utility  of  an  invention  must  be  judged  by  refer- 
ence to  the  state  of  things  at  the  date  of  the  patent.  If 
the  inTention  was  then  useful,  the  fact  that  subsequent 


26  UTILITY 

improvements  have  replaced  the  patented  invention,  and 
rendered  it  obsolete  and  commercially  of  no  value,  does 
not  invalidate  the  patent.  (!'••/  ./..•/..  in  /  <rm  d 

'"/,  6R.  P.  C.  288.) 

It  has  also  been  said  that  if  the  invention  is  not  worked 
by  the  inventor  that  fact  is  }>rim<i-/<ici<>  evidence  of  want  of 
utility.      But   '  that '  (said  JetscJ,    M.    /,'.,  in   deliv. 
judgment  in  the  case  of  <nt,>  \.  I  16  L.  T.  N.  s.  85) 

'  is  subject  to  this  observation,  that  you  may  make  and 
vend  an  improvement  upon  it,  and  if  you  have  found  out 
immediately  after  you  have  patented  your  invention  that  it 
can  be  improved,  it  does  not  by  any  means  show  that  the 
first  invention  was  useless.'  Then,  referring  to  the  case  of 
Renard  v.  Lennstein  (10  L.  T.  N.  s.  177),  which  arose  out 
of  a  patent  for  a  dye,  he  said,  '  There  they  never  sold  an 
ounce  of  dye  made  according  to  the  patent  because  imme- 
diately afterwards  the  inventor  had  discovered  an  improve- 
ment, and  they  had  always  sold  the  improved  dye,  and 
they  were  obliged  to  call  a  witness  to  show  that  they  bad 
made  a  few  ounces  of  dye  and  tried  it,  and  that  it  would 
dye.  The  answer  was  that  under  those  circumstances  the 
mere  fact  of  not  selling  the  original  dye  was  nothing  at  all. 
So  in  this  case  (<>'-,  \.  I.infnrd)  we  have  rather  a  stronger 
illustration,  because  the  inventor  has  patented  these  modifi- 
cations, and  it  turns  out  that  what  he  has  used,  made,  and 
sold  have  been  almost  entirely  number  threes.  No.  1 
itself  does  not  appear  ever  to  have  been  sold.  But  then 
they  say  that  No.  1  will  work,  and  they  call  witnesses  to 
prove  it,  and  there  is  no  denial  from  the  other  side. 
Therefore  there  is  evidence  of  utility.  It  is  very  small 
indeed  as  regards  No.  1,  but  it  is  quite  sufficient  for  the 
support  of  a  patent ;  and  as  to  this  question  of  utility,  as 
we  know,  very  little  will  do.' 


NOVELTY  27 


CHAPTEE  IV. 

THE    INCIDENT    OF   NOVELTY. 

THE  statute  of  James  declares  excepted  from  the  invalidat- 
ing clause  '  all  letters  patent  and  grants  of  privilege  of  the 
sole  working  or  making  of  any  manner  of  new  manufactures 
to  the  true  and  first  inventor  of  such  manufactures,  ivhich 
others  at  the  time  of  making  such  letters  patent  and  grants 
should  not  use.'  Moreover,  the  patent  contains  clauses 
rendering  the  grant  voidable  in  case  the  invention  is  not 
a  new  invention  as  to  the  public  use  and  exercise  thereof, 
or  in  case  the  patentee  is  not  the  true  and  first  inventor  of 
the  invention. 

The  meaning  of  all  this  is  that  if  it  should  be  proved 
that  the  invention  is  destitute  of  novelty  the  patent  is  void. 
If  several  distinct  heads  of  invention  are  claimed  in  the 
specification,  and  one  of  them  is  old,  that  will  invalidate 
the  whole  patent  (Turner  v.  Winter,  1  W.  P.  C.  77  ;  1  T.  E. 
602 ;  Bloxam  v.  Elsee,  6  B.  &  C.  178 ;  Morgan  v.  Seivard, 
1  W.  P.  C.  196  ;  Kay  v.  Marshall,  2  W.  P.  C.  71 ;  Cropper 
v.  Smith,  I  E.  P.  C.  87 ;  S.  C.  2  E.  P.  C.  17).  The  Crown 
having  been  misled  as  to  the  extent  of  the  invention, 
the  grant  of  a  patent  in  respect  of  it  is  void.  It  was  on 
this  principle  that  the  Court,  in  deciding  Morgan  v.  Seward, 
looked  at  the  cases  of  Hill  v.  Thompson  (1.  W.  P.  C.  237), 
and  Brunton  v.  Haivkes  (4  B.  &  A.  541),  in  which  a  patent 
for  several  inventions  was  held  to  be  altogether  void  because 
one  was  not  new.  The  want  of  novelty  is  a  fatal  defect  by 
the  express  wording  of  the  statute,  so  far  as  relates  to  that 
which  is  old ;  and  the  whole  patent  is  rendered  void  by  the 
construction  that  the  consideration  for  the  grant  is  the 
novelty  of  all  the  parts  claimed  to  be  new,  which  considera- 


28  NOVKI.TV 

tion  failing,  or,  as  it  is  sometimes  expressed,  the  Crown 
being  deceived,  the  patent  is  void. 

The  two  chief  questions  under  the  head  of  Novelty 
are: — 

1.  Was  the  patentee  the  true  inventor  of  that  for  which 
he  has  obtained  a  patent  ? 

•J.  If  so,  was  the  invention  new  to  the  public  at  its 
date?  This  includes  the  narrower  question,  Was  the 
patentee  the  first  inventor  of  the  subject-matter  of  his 
patent? 

As  n-^ards  the  first  of  these  questions  it  must  be  an- 
s\v«  red  in  the  negative  if  tin-  i>att  nh.-  obtain.  .1  ti 
ti<>n  from  another  person,  inventions  imported  from  abroad 
being  excluded  from  consideration.  And  as  to  the  second 
question  it  must  also  receive  a  negatiu  reply,  (i)  if  the 
invention  had  got  into  public  use ;  or  (ii)  if  the  invention 
had  become  known  to  the  public  (a)  by  a  description  of  it 
in  a  printed  book  accessible  to  the  public  ;  or  (6)  by  a 
description  in  an  earlier  specification ;  or  (r)  by  prior 
publication  by  the  inventor  or  another  j>«  rson. 

It  has  been  broadly  laid  down  that  when  the  public  has 
become  possessed  of  an  invention  in  any  manner  whatever, 
no  valid  patent  for  it  can  be  subsequently  obtained,  either  by 
the  true  and  first  inventor,  or  by  any  other  person  ('  Hind- 
march  on  Patents,'  p.  88,  referred  to  by  the  judges  with 
approval  in  the  cases  of  Patterson  \.  (i<ixli>iht  Co.,  L.  R. 
8  App.  C.  235  ;  Li*ter  v.  .Wf»M,  3  R.  P.  C.  'J11  ;  // 
son  v.  Sycr,  4  R.  P.  C.  414).  There  are,  however,  certain 
exceptions  to  the  universality  of  this  rule,  as  will  be  shown 
further  on  in  this  chapter. 

The  enquiry  will  be  whether  th«,-  invention  had  become 
part  of  the  public  stock  of  knowledge  before  the  date  of  the 
patent.  'If  that  means'  (said  L»r>l  -In  in  Ifnm- 

phcrson  v.  Sycr)  «  the  knowledge  that  every  member  of  the 
public  possesses,  it  is  clear  that  the  definition  will  meet  very 
few  of  the  cases  in  which  publication  has  taken  place.' 


NOVELTY  29 

TRUE   INVENTOR.1 

A  discovery  may  be  both  useful  and  quite  new  to  the 
world  at  large ;  yet  if  it  can  be  shown  that  the  person,  upon 
whose  statement  that  he  was  the  true  inventor  the  patent 
was  granted,  does  not  really  answer  to  that  designation,  the 
patent  is  not  saved  from  the  clause  in  the  statute  of  James, 
which  declares  that  all  monopolies  are  invalid. 

'  A  man  may  publish  to  the  world,'  said  L.  C.  J.  Tindal, 
in  Gibson  v.  Brand  (1  W.  P.  C.  628),  'that  which  is  per- 
fectly new  in  all  its  uses,  and  has  not  before  been  enjoyed,, 
and  yet  he  may  not  be  true  and  first  inventor;  he  may 
have  borrowed  it  from  some  other  person  .  .  .  and  then 
the  Legislature  never  intended  that  a  person  who  had 
taken  all  his  knowledge  from  another,  from  the  labours 
and  assiduity  or  ingenuity  of  another,  should  be  the  man 
who  was  to  receive  the  benefit  of  another's  skill.' 

Hival  Inventors. — One  of  the  earliest  cases  on  this  sub- 
ject is  that  of  Dollond,  the  optician,  who  brought  an  action 
for  an  infringement  of  his  patent  for  a  new  method  of 
making  the  object-glasses  of  refracting  telescopes.  It  was 
alleged,  on  the  part  of  the  defendant,  that  Dollond  was  not 
the  true  and  first  inventor  of  the  method,  inasmuch  as  Dr. 
Hall  had  made  the  discovery  before  him.  But  since  Dr. 
Hall  had  confined  it  to  his  closet,  and  had  not  communicated 
it  to  the  public,  it  was  held  (1766)  that  Dollond  was  to  be 
considered  the  first  and  true  inventor  as  required  by  the 
statute.  The  case  was  not  reported,  and  our  knowledge  of 
it  is  derived  from  the  mention  made  of  it  in  the  case  of 
Boulton  v.  Bull  (2  H.  Bl.  469).  Dollond's  case  was  fol- 
lowed by  numerous  others,  the  result  of  which  may  be  thus 
stated  : — If  two  persons  make  the  same  invention  about 

1  It  must  be  kept  in  mind  that  the  word  '  patentee  '  in  this  section  signi- 
fies, in  the  case  of  a  patent  granted  to  several  persons  jointly  under  the  Act 
of  1883,  only  the  person  who  claimed  to  be  the  inventor  of  the  subject- 
matter  of  the  patent,  and  does  not  include  other  non-inventors  who  may 
have  joined  him  in  obtaining  the  grant. 

Moreover,  it  will  be  shown  hereafter  that  the  importer  of  an  invention 
from  abroad  is  held  by  the  courts  of  law  to  fall  within  the  meaning  of  the 
words  '  true  and  first  inventor.' 


30  N"V  I.  I.TV 

tin-  same  time  independently  of  each  oth<  r,  h.  who  first 
obtains  a  patent  has  an  •  \cluM\.  i i-ht  to  • 

••/•A  v.  / .  -  ;  and  he  will  In- 

held  the  first  inv.  ntor,  although,  in  point  of  fact,  the  date 
of  his  invention  was  subsequent  to  that  of  rson, 

provided  tlmt  there  was  not  such  a  use  of  tin-  invention 
previously  to  the  patent  as  amounted  to  what  is  Win/ 
called  '  public  use.' 

In  /  Miirlin.j  (1  W.  1'.  C.  49G  .  .  said, 

'  If  I  make  a  discovery,  and  am  enabled  to  produce  an  effect 
from  my  own  experiments,  judgment,  and  skill,  it  is  no 
objection  that  some  one  else  has  made  a  similar  discovery 
in  his  mind,  unless  it  has  become  public.'  And  1'nrkc,  J., 
said,  '  There  is  no  case  in  which  a  patentee  has  been 
deprived  of  the  benefit  of  his  invention  because  another  had 
also  invented  it,  unless  he  had  also  brought  it  into  use.' 
Again,  in  the  case  of  Hill  v.  Thompson  (1  W.  P.  C.  211  . 
Dallas,  J.,  said,  '  It  is  not  enough  to  have  discovered  what 
was  unknown  to  others  before,  if  the  discovery  be  confined 
to  the  knowledge  of  the  party  having  made  it ;  but  it  must 
have  been  communicated  more  or  less,  or  it  must  have  been 
more  or  less  made  use  of,  so  as  to  constitute  discovery  as 
applied  to  subjects  of  this  sort.' 

Joint  Iiwntnr*. — It  may  happen  that  a  given  invention 
results  from  the  combined  operation  of  two  or  more  minds, 
in  which  case  it  is  necessary  that  all  the  inventors  should 
apply  for  the  patent.  Patents  have  sometimes  been  dis- 
puted on  the  ground  that  the  patentee  owed  a  material 
part  of  the  invention  to  another  person  ;  and  if  this  can 
be  made  out  on  satisfactory  evidence,  it  is  fatal. 

Assistants  <m<l  Worknu-n. — It  must,  however,  be  taken  to 
be  undoubted  law,  that  the  suggestions  and  aid  of  workmen 
employed  by  the  inventor  to  carry  out  his  ideas  will  have 
no  such  effect.  An  inventor  is  entitled  to  something  more 
than  the  mere  manual  labour  of  the  persons  he  employs. 
If  the  substantial  part  and  leading  idea,  the  principle  of  an 
invention,  belong  to  one  person,  he  may  properly  call  in 
the  assistance  of  another  to  work  it  out  and  improve  it ; 


NOVELTY  81 

and  after  obtaining  the  benefit  of  that  assistance,  he  may 
legally  procure  a  patent  for  the  invention.  The  observa- 
tions of  Alderson,  J.,  to  the  jury  on  trying  Minter  v.  Wells 
(I  W.  P.  C.  132)  will  throw  light  upon  this  point.  'Minter 
[the  patentee]  and  Button  [a  workman  employed  by  Minter] 
were  together  about  the  time  the  invention  took  place : 
which  of  the  two  suggested  the  invention,  and  which  carried 
it  into  effect,  is  a  question  for  you  to  decide.  If  Sutton 
suggested  the  principle  to  Minter,  then  he  would  be  the 
inventor.  If,  on  the  other  hand,  Minter  suggested  the 
principle  to  Sutton,  and  Sutton  was  assisting  him,  then 
Minter  would  be  the  first  and  true  inventor,  and  Sutton 
would  be  a  machine,  so  to  speak,  which  Minter  uses  for  the 
purpose  of  enabling  him  to  carry  his  original  conception 
into  effect.  You  will  judge  which  is  the  more  probable  of 
the  two.  Minter  makes  out  his  primd-facie  case ;  he  is  the 
person  who  takes  out  the  patent.  If  Sutton  has  received 
a  compensation,  nothing  would  have  been  more  simple  and 
easy  than  that  he  should  have  taken  out  the  patent,  and 
still  Minter  might  have  had  the  same  benefit  to-day ;  and 
there  is  no  apparent  reason  why  Sutton  should  not  have 
taken  out  the  patent  which  Minter  has  taken  out,  unless 
they  were  both  desirous  to  ruin  the  invention ;  for  suppose 
two  persons  are  engaged  on  an  invention  of  this  descrip- 
tion, they  know  perfectly  well  between  themselves  who  is 
the  real  inventor  of  it,  and  who  is  the  workman  to  carry 
into  effect  the  conception ;  but  they  would  destroy  the 
value  of  it  to  both  if  they  did  not  take  it  out  in  the  name 
of  the  right  person.'  See  also  Bloxam  v.  Elsee  (6  B.  &  C. 
169),  Minter  v.  Mower  (1  W.  P.  C.  138),  and  Barber  v. 
Harris  (Holroyd,  60),  which  show  that  a  man  may  direct 
other  persons  to  do  certain  things  and  yet  be  the  true 
inventor. 

In  Allen  v.  Raicson  (1  C.  B.  551),  a  case  where  the 
validity  of  a  patent  was  contested  on  the  ground  that  parts 
of  the  invention  owed  their  origin  to  two  workmen,  it  was 
held  that  more  convenient  modes  of  carrying  out  the  main 
principle  of  an  invention  and  subordinate  improvements 


iXTY 

l.y    pi-r-nii-    in    thr   «  iupl>.\  in.  nt   <>f  tin-   j»;it.  litre 

may  be  safely  adopted  by  him  and  embodied  in  his  specifi- 
cation. 'I  take  tbe  law  to  be*  (said  Mr. 
before  whom  the  action  for  an  infringement  was  tried) 
'that  if  a  person  has  discovered  an  improved  principle 
and  employs  engineers,  agents  or  other  persons  to  assist 
him  in  carrying  out  that  principle,  and  they  in  the  coarse 
of  experiments  arising  from  that  employment  make  valuable 
discoveries  accessory  to  the  main  principle,  and  tending  to 
carry  that  out  in  a  better  manner,  such  improvements  are 
the  property  of  the  inventor  of  the  original  improved  prin- 
ciple, and  may  be  embodied  in  his  patent ;  and  if  so  em- 
bodied the  patent  is  not  avoided  by  evidence  that  the  agent 
or  servant  made  the  suggestions  of  the  subordinate  im- 
provement of  the  primary  and  improved  principle.'  When 
a  new  trial  was  moved  for,  on  the  ground  that  the  judge 
had  misdirected  the  jury,  it  was  refused.  On  that  occasion 
C.  J.  Tindal  said,  '  It  would  be  difficult  to  define  how  far 
the  suggestions  of  a  workman  employed  in  the  construction 
of  a  machine  are  to  be  considered  as  distinct  inventions  by 
him,  so  as  to  avoid  a  patent  incorporating  them  taken  out 
by  his  employer.  Each  case  must  depend  upon  its  own 
merits.  But  when  we  see  that  the  principle  and  object  of 
an  invention  are  complete  without  it,  I  think  it  is  too  much 
that  a  suggestion  of  a  workman  employed  in  the  course  of 
the  experiments,  of  something  calculated  more  easily  to 
carry  into  effect  the  conceptions  of  the  inventor,  should 
render  the  patent  void.' 

A  firm  of  manufacturing  chemists  employed  £.,  a  scien- 
tific chemist,  in  their  laboratory  as  analyst  and  experimen- 
talist. The  manufacture  of  alum  free  from  impurities  being 
a  desirable  object,  it  occurred  to  E.  to  try  experiments  with 
peroxide  of  manganese  for  that  purpose,  and  he  was  there- 
upon instructed  by  the  firm  to  make  the  suggested  experi- 
ments. This  he  did  with  the  assistance  of  one  member  of 
the  firm,  and  whilst  having  communications  with  the  other. 
The  experiments  succeeded,  and  a  patent  was  obtained  for 
the  discovery  by  the  firm  in  their  own  names.  The  judge, 


NOVELTY  33 

at  the  trial  of  an  action  where  the  validity  of  the  patent 
came  in  question,  held  that  they  were  justified  in  applying 
for  the  patent.  Although  many  stages  of  the  discovery 
may  have  been  due  to  E.,  yet  he  was  the  agent  of  his 
€mployers.  His  labours  were  theirs,  he  worked  in  their 
laboratory  and  with  their  materials  as  well  as  with  their 
assistance,  and  the  benefit  of  the  discovery  belonged  to 
them.  (Kurtz  v.  Spence,  5  E.  P.  C.  180.) 

But  where  the  patentee  has  no  closer  connection  with 
the  invention  than  that  of  being  simply  the  employer  of 
the  inventor,  he  will  not  be  able  to  sustain  his  patent. 
Thus,  in  Arkwright's  case,  it  appeared  that  Arkwright,  the 
patentee,  had  been  told  of  a  particular  roller,  part  of  the 
machinery  by  Kay,  and  that,  perceiving  the  value  of  the 
invention,  he  took  Kay  into  his  service  for  two  years, 
•during  which  time  he  employed  him  to  make  models,  and 
subsequently  claimed  the  invention  as  his  own,  making  it 
the  foundation  of  a  patent.  Arkwright  adopted  in  the 
same  way  a  crank  invented  by  Hargrave.  In  the  face  of 
this  evidence,  Arkwright's  claim  to  be  the  true  and  first 
inventor  fell  to  the  ground.  (Rex  v.  Arkwright,  1  W.  P.  C. 
64.)  Again,  in  the  case  of  Barker  v.  Shaw  (I  W.  P.  C. 
126  w.),  an  action  for  the  infringement  of  a  patent  for  an 
improvement  in  making  hats,  a  witness  proved  that  he  had 
made  the  improvement  whilst  employed  in  the  patentee's 
workshop,  whereupon  the  plaintiff  was  nonsuited. 

In  these  cases  it  was  clear  that  the  patentee  was  not 
the  true  and  first  inventor,  since  the  source  of  the  invention 
could  be  traced  elsewhere.  "Whenever  this  can  be  done 
{with  the  exceptions  stated  in  the  note  on  page  29)  the 
patent  is  invalid.  It  is  so,  as  we  have  seen,  although  the 
real  inventor  should  be  in  the  service  of  the  patentee ;  and, 
a  fortiori,  will  it  be  so  where  there  is  still  less  connection 
between  them.  In  Tennant's  case  it  was  proved  that, 
before  the  grant  of  the  patent,  conversations  had  taken 
place  between  Tennant  (the  patentee)  and  a  chemist,  who 
had  suggested  to  Tennant  the  basis  of  the  patented  im- 
provement. This  piece  of  evidence,  in  addition  to  slight 

D 


It-!  NuVKl.IV 

evidence  of  user,  induced  the  Court  to  nonsuit  the  plain  tiff. 

p.  c.  i 


PRIOR   PUBLIC   UHKB. 

One  of  the  first  cases  which  the  books  contain  was 
decided  in  1798.  Tennant  brought  an  action  for  the  in- 
fringement of  his  patent  for  a  method  of  using  calcareous 
(art  ha  instead  of  alkaline  substances  in  bleaching.  It  was 
proved,  on  the  one  hand,  that  bleachers  were  generally 
ignorant  of  the  patented  bleaching  liquor  until  after  the 
date  of  the  patent.  On  the  otlu  r  hand,  it  was  proved  that 
a  certain  bleacher  had  used  the  same  method  of  preparing 
bleaching  liquor  for  five  or  six  years  previously  to  the  date 
of  the  patent  ;  and  that  the  method  had  been  kept  s< 
from  all  except  his  two  partners,  and  two  servants  em- 
ployed in  preparing  the  liquor.  On  this  evidence  the 
previous  user  was  held  to  render  the  patent  invalid  (I  \\. 
P.  C.  125). 

The  evidence  given  in  Lewis  v.  Murlimi,  to  impugn  the 
patentee's  claim  of  novelty,  \vas  that  several  years 
viously  a  similar  machine  was  in  use  at  New  York,  and 
that  a  specification  had  been  sent  over  in  1811  to  a  person 
residing  at  Leeds,  who  employed  two  engineers  to  manu- 
facture a  machine  from  it,  which,  however,  was  never 
finished.  The  specification  was  shown  to  several  persons, 
but  the  machine  was  never  brought  into  use.  In  1816  a, 
model  of  a  machine  for  shearing  from  list  to  list,  by  means 
of  a  rotatory  cutter,  was  brought  over  from  America,  and 
shown  to  two  or  three  persons  in  the  manufactory  of  the 
importer  ;  but  no  machine  was  ever  made  from  it,  nor  was 
it  publicly  known  to  exist.  Moreover,  one  Coxon,  many 
years  previously,  had  made  a  machine  to  shear  from  list  to 
list,  and  this  was  tried  by  a  person  called  as  a  witness  ;  but 
he  did  not  think  it  answered,  and  soon  discontinued  the 
use  of  it.  Loril  T>  nt>'nh-n  told  the  jury  that  if  it  could  l»e 
shown  that  the  patentee  had  seen  the  model  or  specification, 
that  might  rebut  the  claim  of  invention.  But  ther. 
no  evidence  of  that  kind  ;  and  he  left  it  to  them  to  say 


NOVELTY  35 

whether  the  invention  had  been  in  public  use  and  operation 
before  the  granting  of  the  patent.  They  found  that  it  had 
not ;  and  on  the  motion  for  a  new  trial  the  judges  thought 
there  was  no  reason  to  find  fault  with  the  verdict. 

Losh's  patent  was  for  improvements  in  the  wheels  of 
railway  carriages,  and  these  improvements  consisted  in 
constructing  the  pieces  composing  the  entire  wheel  of 
malleable  iron,  and  then  welding  them  together.  It  was 
contended  by  the  defendant  in  the  case  of  Losh  v.  Hague 
(1  W.  P.  C.  202)  that  the  invention  was  not  new,  inasmuch 
as  one  Paton  had,  previously  to  the  date  of  Losh's  patent, 
and  under  a  patent  of  his  own,  described  a  mode  of  con- 
structing wheels  of  wrought  iron,  which  differed  little,  if  at 
all,  from  those  patented  by  Losh ;  moreover,  that  although 
the  first  wheel  made  under  Paton's  patent  was  riveted,  all 
Paton's  other  wheels,  thirty  pairs  in  number,  were  made 
with  the  circumference  of  the  inner  rim  entirely  of  wrought 
iron,  and  then  welded  into  one  piece.  '  The  question  you 
have  to  try,'  said  Lord  Abinger  to  the  jury,  '  on  the  origin- 
ality of  Losh's  invention,  is  not  whether  Paton's  patent 
contains  that  perfect  periphery  that  is  required  in  this  case, 
but  whether  wheels  have  been  publicly  made  on  this  prin- 
ciple.' (The  jury  by  their  verdict  found  that  wheels  had 
been  previously  made  on  the  same  principle  as  Losh's 
wheels.)  'If,'  continued  his  lordship,  'the  wheels  had 
been  made  and  sold  to  any  one  individual,  the  public's  not 
wanting  them  because  there  were  no  railways,  their  not 
being  adapted  to  any  particular  use,  which  at  that  time 
was  open  to  the  public  to  apply  them  to,  makes  no  difference. 
You  have  it  in  evidence  that  thirty  pairs  were  made  with  a 
complete  continuous  circumference  all  round.  If  they  were 
so  made  and  sold,  or  used  at  all,  though  not  for  any  purpose 
that  then  made  them  popular  or  desirable,  still  they  were 
made  with  that  particular  advantage  which  is  claimed  by 
Losh's  patent,  namely,  a  periphery  made  of  one  continuous 
piece  of  wrought  iron,  as  well  as  the  spokes.  But  that  is  not 
all  the  evidence ;  there  are  two  parties  from  Manchester.  One, 
Horsefall.  says  that  he  remembers,  nearly  twenty-eight  years 

D  2 


36  NOVELTY 

ago,  that  tin •!••  \\.  n  tin.  •  trucks,  having  each  three  wheels, 
and  those  \\h..  U  were  made  of  wrought-iron  spokes  in  a 
..:ht-ir«'ii  t -ircumference,  ami    t)i«  n-   is  one  exhibited 
>ti  which  was  actually  in   use  at  that  time ;    tin- 
other,  Roberts,  confirms  that,  and  has  stated  that 
existed  for  many  years,  and  that  they  have  been  used.' 

In  charging  the  jury  assembled  to  try  the  action  of 
Cornish  v.  A     <       1  \\  .  I1.  <  .  506  ,   /   -  I  -aid  that 

4  if  th.  invention  was  at  the  time  the  letters  patent  were 
grant*  «1  in  any  degree  of  general  use ;  if  it  was  known  at 
all  to  the  world  publicly,  and  practised  openly,  so  that  any 
other  person  might  have  the  means  of  acquiring  the  know- 
ledge of  it  as  wvll  ns  the  person  who  obtained  the  patent, 
then  the  let t<  M.  Now  it  will  be  a  que- 

for  you  to  say  whetln  r.  upon  the  evidence  which  you  have 
heard,  you  are  satisfied  that  the  invention  was  or  was  not 
in  public  use  and  operation  at  the  time  the  letters  pat«  ut 
were  granted.  It  is  obvious  that  there  are  certain  limits 
to  that  question ;  the  bringing  it  within  that  precise  de- 
scription which  I  have  just  given  must  depend  upon  the 
particular  facts  which  are  brought  before  a  jury.  A  man 
may  make  experiments  in  his  own  closet  for  the  purpose 
of  improving  any  art  or  manufacture  in  public  use ;  if  he 
makes  these  experiments,  and  never  communicates  them 
to  the  world,  and  lays  them  by  as  forgotten  things,  another 
person  who  has  made  the  same  experiments,  or  has  gone 
a  little  further,  or  is  satisfied  with  the  experiments,  may 
take  out  a  patent  and  protect  himself  in  the  sole  making 
of  the  article  for  fourteen  years ;  and  it  will  he  no  answer 
to  him  to  say  that  another  person  before  him  made  the 
same  experiments,  and  therefore  that  he  was  not  the  f\r>t 
discoverer  of  it,  because  there  may  be  many  discoverers 
starting  at  the  same  time,  many  rivals  that  may  be  running 
on  the  same  road  at  the  same  time,  and  the  first  that 
comes  to  the  Crown  and  takes  out  a  patent,  it  not  being 
generally  known  to  the  public,  is  the  man  who  has  the 
right  to  clothe  himself  with  the  authority  of  the  patent  and 
enjoy  its  benefits.  That  would  be  an  extreme  case  on  one 


NOVELTY  37 

side ;  but  if  the  evidence,  when  properly  considered,  classes 
itself  under  the  description  of  experiment  only,  and  unsuc- 
cessful experiment,  that  would  be  no  answer  to  the  validity 
of  the  patent.  On  the  other  hand,  the  use  of  an  article 
may  be  so  general  as  to  be  almost  universal.  In  a  case 
like  that  you  can  hardly  suppose  that  anyone  would  incur 
the  expense  and  trouble  of  taking  out  a  patent.  That 
would  be  a  case  where  all  mankind  would  say,  "  You  have 
no  right  to  step  in  and  take  that  which  is  in  almost  uni- 
versal use,  for  that  is,  in  fact,  to  create  a  monopoly  to 
yourself  in  this  article  without  either  giving  the  benefit  to 
the  world  of  the  new  discovery,  or  the  personal  right  to  the 
value  of  the  patent,  to  which  you  would  be  entitled  from 
your  ingenuity  and  from  your  application."  Therefore  it 
must  be  between  these  two  limits  that  cases  will  range 
themselves  in  evidence ;  and  it  must  be  for  a  jury  to  say 
whether,  supposing  these  points  to  be  out  of  the  question 
in  any  particular  case,  the  evidence  which  has  been  brought 
before  them  convinces  them  that  the  subject  of  the  patent 
was  in  public  use  and  operation  at  that  time,  at  the  time 
when  the  patent  itself  was  granted  by  the  Crown.  If  it 
was  in  public  use  and  operation,  then  the  patent  is  a  void 
patent,  and  amounts  to  a  monopoly;  if  it  was  not,  the 
patent  stands  good.' 

The  case  of  Carpenter  v.  Smith  (I  W.  P.  C.  530)  arose 
out  of  an  alleged  infringement  of  a  patent  for  an  improved 
lock.  '  I  think,'  said  Lord  Abinger  to  the  jury,  '  that  what 
is  meant  by  "  public  use  and  exercise  "  is  this :  a  man  is 
entitled  to  a  patent  for  a  new  invention,  and  if  his  inven- 
tion is  new  and  useful,  he  shall  not  be  prejudiced  by  any 
other  man  having  invented  that  before,  and  not  made  any 
use  of  it ;  because  the  mere  speculations  of  ingenious  men, 
which  may  be  fruitful  of  a  great  variety  of  inventions,  if 
they  are  not  brought  into  actual  use,  ought  not  to  stand  in 
the  way  of  other  men  equally  ingenious,  who  may  after- 
wards make  the  same  inventions  and  apply  them.  .  .  . 
The  meaning  of  these  words,  "  public  use,"  is  this :  that  a 
man  shall  not,  by  his  own  private  invention,  which  he 


38  NOVKI.TY 

keeps  lock*  <1  up  in  his  own  breast,  or  in  his  own  desk,  and 
never  communicates  it,  take  away  the  rig) it  which  another 
man  has  to  a  patent  for  the  same  invention.  Now  "  public 
use  "  means  this :  that  the  use  of  it  shall  not  be  secret,  )>nt 
public.  If  a  man  invents  a  thing  for  his  own  use,  whether 
he  sells  it  or  not — if  he  invents  a  lock,  and  puts  it  01 
own  gate,  and  has  used  it  for  a  dozen  years,  that  is  a  public 
use  of  it.  If  it  were  otherwise,  see  what  the  consequence 
would  be.  If  Mr.  Danes  has  a  lock  whii -h  he  directed  to  be 
made  and  put  on  his  gate  sixteen  years  ago  at  leant ;  if  that 
was  not  a  public  use  which  prevented  a  man  from  taking 
out  a  patent,  any  man  might  go  and  take  a  model  of  that 
lock,  and  get  a  patent  for  it.  How  can  he  be  the  inventor 
of  it?  Because,  to  obtain  a  patent,  a  man  must  be  the 
inventor;  and  if  it  has  been  once  in  public  use,  tha 
used  in  a  public  manner,  not  used  by  the  public,  yet  if  it 
has  been  used  by  half-a-dozen  individuals,  or  one,1  in  a 
public  manner,  any  man  having  access  to  it,  how  can  he  be 
said  to  be  the  inventor,  if  by  merely  gaining  access  to  that 
he  takes  out  a  patent  ?  A  man  cannot  be  said  to  be  the 
inventor  of  that  which  has  been  exposed  to  public  view, 
and  which  he  might  have  had  access  to  if  he  had  thought 
fit.  ...  If  you  are  of  opinion  (not  that  they  were  generally 
adopted  by  the  public  and  used  by  the  public,  for  that,  in 
my  opinion,  is  a  perfect  fallacy)  that  the  use  of  them  is 
public,  and  the  exercise  of  the  invention  was  public,  and  not 
kept  secret  so  that  the  public  might  have  no  benefit  from  it, 
then  I  think  that  part  of  the  issue  you  ought  to  find  for  the 
defendant.'  The  learned  judge  summed  up  the  evidence  as 

1  '  If  a  person '  (asked  Dallas,  J.,  Hill  v.  Thompson,  1.  W.  P.  C.  240) 
'  had  done  precisely  all  that  is  specified  to  be  done  in  this  specification,  and 
had  not  communicated  it  to  any  one,  could  he  be  prohibited  by  the  patent 
from  doing  that  which  he  had  done  before,  though  known  to  no  one  but  him- 
self ;  or  could  it  be  considered  as  new,  if  practised  by  only  one  person,  but 
not  communicated  to  the  world  ? '  And  Tindal,  C.  J.,  in  Cornish  v.  Kccnc 
(1  \V.  P.  C.  511),  observed  that  'if  the  defendants  had  shown  that  they 
practised  it  (i*.  the  patented  invention),  and  produced  the  same  result  in 
their  factory  before  the  time  the  patent  was  obtained,  they  cannot  be  pre- 
vented by  the  subsequent  patent  from  going  on  with  that  which  they  have 
done.' 


NOVELTY  39 

to  a  public  user  in  this  way : — Twenty-six  years  ago  Freer 
produced  to  Tilsley  a  model  of  a  lock,  and  desired  him  to 
make  six  dozen  like  it,  and  afterwards  a  dozen  and  a  half. 
Tilsley  employed  Walker  to  execute  the  order,  and  gave 
him  the  model.  The  locks  were  made,  and  Freer  paid  for 
them.  '  Here  you  have  an  article  manufactured  by  an 
English  manufacturer,  and  sold ;  and  in  my  opinion,  if  it 
was  sold  even  for  the  assumed  purpose  of  being  sent  to 
America,  I  cannot  but  think  that  that  would  be  a  destruc- 
tion of  the  novelty  of  the  plaintiff's  invention.  When  a 
model  is  sent  to  a  workman,  who  sells  seven  and  a  half 
dozen,  and  sells  them  for  a  certain  price,  I  must  say  I  think 
the  invention  was  used  and  publicly  exercised.  There  is 
no  secrecy  in  the  manufacture  of  them ;  it  is  not  shut  up 
in  the  closet  of  the  workman  who  makes  them,  but  the  man 
who  makes  them  gives  directions  to  another  workman  ;  he 
sells  them  for  his  own  profit.' 

These  observations  of  Lord  Abingcr  were  made  at  the 
trial  of  an  action  which  terminated  in  favour  of  the  de- 
fendant. On  the  motion  for  a  new  trial,  on  the  ground  of 
misdirection,  the  judges  of  the  Court  of  Exchequer  expressed 
themselves  satisfied  with  his  lordship's  view  of  the  law  and 
refused  a  rule,  Alderson,  B.,  saying  that  '  public  use  means 
a  use  in  public,  so  as  to  come  to  the  knowledge  of  others 
than  the  inventor,  as  contradistinguished  from  the  use  of  it 
by  himself  in  his  chamber.' 

The  point  as  to  public  use  was  again  raised  in  an  action 
for  infringing  a  patent  for  paving  streets  with  wooden  blocks. 
It  was  shown  that,  some  time  before  the  date  of  the  patent, 
the  carriage-way  of  a  porch  of  Sir  W.  Worsley's  dwelling- 
house  in  Yorkshire  had  been  laid  with  blocks  of  wood,  on  a 
system  apparently  similar  to  the  plaintiff's.  Cresswell,  J., 
told  the  jury,  that  if  they  thought  the  plaintiff's  method  of 
constructing  the  wooden  pavement  was  the  same  as  that 
adopted  at  Sir  W.  Worsley's,  the  invention  must  be  deemed 
to  have  been  made  public.  It  had  been  publicly  used,  and 
made  known  to  all  persons  who  went  to  the  house,  so  far  as 
ocular  inspection  could  acquaint  them  with  it.  Whether  it 


40 

had  been  used  by  one  or  used  l.y  H\. ,  the  learned  j 

thought    limde   lio  differel:  I'l   \.    II  'illi.ii;,.  '2  \\ '. 

In  another  action  for  infringing  the  same  p 

against  another  d»  f.  ndant,  it  wa>  proved  tliat  the  pavement 

ir  W.  \Y  -vas  on  a  different   principle   from  tin- 

plaintiffs.     I'm-).' .  /:.,  !<>ld  tin-  jury  that    if  tin-  mode  of 

forming  and  laying  tlie  blocks  at  Sir  \V.  Worsley's  had  been 

isely  similar  to  the  plaintiffs,  that  would  have  1" 
sufficient  user  to  destroy  tin-  plaintiffs  patent,  though  put 
in  practice  in  a  spot  to  which  the  puhlic  had  not  free  access. 
(St,-,i,l  v.  .1;  B  W.  P.  C.  1  »'.'.' 

A  patent  for  an  improved  anchor  was  granted  in  1838 
to  one  Porter.  On  the  trial  of  an  action,  brought  by  Porter's 
assignee,  for  an  infringement,  it  was  shown  that  in  1826 
an  anchor-smith  had  invented  an  anchor  similar  to  Porter's, 
and  had  sold  a  few  of  that  make  to  various  shipowners  for 
use  in  their  ships.  This  was  held  such  a  public  user  as 
sufficed  to  invalidate  the  patent.  //  nilmll  \.  Hln,>mer, 
-2  W.  P.O.  199.) 

IlnncorL-  v.  Sniiii'n-tU  (reported  in  Newton's  L.  J.,  vol. 
\x\i\.  p.  158)  is  a  case  in  which  peculiar  circumstances 
tending  to  show  public  user  were  adduced  in  evidence  for 
tin-  purpose  of  rebutting  the  claim  to  novelty,  and  it  raised 
the  interesting  question  whether  publication  in  this  country 
of  an  artirl,-  made  abroad,  there  having  been  no  disclosure 
of  the  secret  of  making  it,  is  equivalent  to  a  publication 
of  the  inri'iitinn,  so  as  to  render  void  a  patent  afterwards 
obtained  in  this  country  by  another  inventor  for  a  similar 
invention.  Hancock's  patent  was  for  improvements  in  the 
preparation  of  caoutchouc,  and  the  invention  consisted  in 
combining  sulphur  with  the  caoutchouc,  which  rendered  it 
elastic  at  all  temperatures.  The  defendants  imported  from 
America  shoes  made  of  caoutchouc,  which,  when  analysed,, 
were  found  to  contain  sulphur  along  with  oxide  of  lead  and 
other  ingredients.  In  an  action  for  an  infringement  of  the 
patent  it  was  proved  that  previously  to  the  date  of  the 
plaintiffs  patent  specimens  of  caoutchouc  prepared  by 


NOVELTY  41 

sulphur  were  sent  to  England  by  Goodyear,  of  New  York, 
and  were  shown  to  Hancock,  but  the  secret  of  the  manu- 
facture was  not  communicated  to  him.  Negotiations  were 
commenced  for  the  sale  of  the  invention  to  Hancock,  but 
never  completed.  It  was  stated  in  evidence  that  Goodyear's 
agent  left  specimens  with  Hancock,  supposing  that  it  would 
not  be  possible  for  him  to  discover  the  process  by  which  it 
was  prepared.  However,  Hancock  made  experiments,  and 
discovered  that  sulphur  endowed  caoutchouc  with  the  pro- 
perty of  elasticity  at  all  temperatures,  and  he  then  took 
out  his  patent.  Mr.  Justice  Williams  left  it  to  the  jury  to 
say  whether,  supposing  the  shoes  to  have  been  manufac- 
tured in  England,  they  could  have  been  made  without 
infringing  the  plaintiff's  patent ;  and  then  he  proceeded  to 
make  these  remarks  upon  the  novelty  issues : — '  The  de- 
fendants do  not  deny  that  Hancock  is  to  be  considered  the 
inventor,  notwithstanding  Goodyear  had  previously  made 
the  discovery,  provided  the  invention  had  not  been  pub- 
lished or  in  use  in  this  country  before  the  date  of  the 
patent.  The  defence  consists  of  this :  not  only  had  Good- 
year discovered  the  invention  first,  but  also  that  the  in- 
vention had  been  substantially  published,  and  was  in  use — 
not  in  secret  use,  but  in  public  use — before  the  date  of  the 
patenb;  that  the  material  being  in  public  use,  the  ready 
means  of  the  invention  were  also  necessarily  before  the 
public  ;  because  it  is  said  the  article  presented  in  itself  such 
means  of  knowledge  to  the  public  as  to  enable  anyone  of 
ordinary  competence  to  reproduce  the  article.  If  you  should 
be  of  opinion  that  the  material  was  in  use  before  the  date 
of  the  patent,  then  the  question  resolves  itself  into  this : 
what  is  your  opinion  as  to  whether  the  publication  of  the 
material  was  substantially  a  publication  of  the  invention  ? 
If  you  should  find  that  the  material  was  in  public  use,  but 
that,  notwithstanding,  the  invention  remained  still  a  matter 
to  be  discovered,  in  my  opinion  the  plaintiff's  case  would 
not  be  affected  by  the  circumstance  of  the  material  being 
in  public  use.  If,  on  the  other  hand,  you  should  think  not 
only  that  the  material  was  in  public  use  (and  I  should  here 


42  KOVI:I 

say  that  I  do  not  think  it  is  necessary  tin-  use  should  be 
actual  sale— if  it  were  in  j.ul.lic  use  it  net-<l  not  IK  hold;  it 
would  he  sufficient,  for  instance,  if  it  were  in  use,  handing 
about  the  country  for  the  purpose  of  attracting  customers) ; 
i  .should  think,  also,  that  the  material  being  so  in  use,  it 
was  so  palpable  how  you  could  make  it,  when  you  got  the 
material,  that  substantially  the  disclosure  of  the  material 
was  a  disclosure  of  the  means  of  making  it ;  if  you  do  not 
think  that,  then  I  think  the  plaintiffs  case  is  unaffected  by 
the  circumstance  of  the  material  being  before  the  public  in 
the  way  I  have  been  describing.'  The  jury  found  a  verdict 
for  the  plaintiff,  and  thus  the  foreign  inventor  lost  the 
benefit  of  a  very  valuable  invention  by  not  taking  the  pre- 
caution to  obtain  a  patent  in  this  country  before  opening 
negotiations  for  the  sale  of  the  manufactured  article. 

On  the  trial  of  Mimf;  v.  /••„*/,•,•  c>  W.  P.  C.  108-108), 
Timid,  C.  ,/.,  said  to  the  jury,  'I  look  upon  the  invention 
to  consist  in  this,  that  Muntz  has  by  an  experiment  ascer- 
tained that  a  certain  mixture  of  the  alloy  of  zinc  with 
copper  will  have  the  effect  of  producing  a  better  sheathing 
(for  the  bottom  of  shii»>  by  reason  and  by  means  of  its 
oxidating  just  in  sufficient  quantities — that  is,  not  too  much, 
so  as  to  wear  away  and  impair  the  sheathing  and  render 
the  vesoel  unsafe,  but  enough,  at  the  same  time,  to  keep 
l>y  its  wearing  the  bottom  of  the  vessel  clean  from  those 
impurities  which  before  attached  to  it.  And  if  it  was  shown, 
as  possibly  it  might  be,  that  sheets  had  been  made  of  metal 
before,  in  the  same  proportion  which  he  had  pointed  out, 
and  if  this  hidden  virtue  or  quality  hod  not  been  discovered 
or  ascertained,  and  consequently  the  application  never  made, 
I  cannot  think  the  patent  will  foil  on  that  ground.  ...  In 
my  judgment  it  will  not  go  far  enough  [to  show  that  sheets 
of  this  particular  alloy  bad  been  previously  made],  unless 
they  can  show  there  has  been  some  application  of  them 
before  to  this  very  useful  purpose.  ...  I  do  not  think  that 
the  circumstance  of  showing  that  the  combination  of  these 
two  materials  in  a  metal  plate  will  of  itself  destroy  this 
patent,  when  no  attention  at  the  time  was  paid  to  the 


NOVELTY  43 

purpose  for  which  this  patent  was  taken  out,  and  it  was 
made  merely  in  the  ordinary  course  of  melters  of  metals  for 
the  various  and  ordinary  purposes  of  life.  I  do  not  think 
that  the  circumstances  of  showing,  that  in  the  long  time 
that  has  passed  before  us  in  the  different,  and  I  may  say 
infinitely  varying,  combinations  that  must  have  been  made 
for  the  various  purposes  for  which  brass  and  other  metal 
was  manufactured  for  ordinary  and  common  purposes  of 
life — to  call  a  workman  to  show  that  on  some  occasion  or 
occasions  he  had  combined  them  in  those  proportions  for 
another  and  different  purpose ;  it  does  not  appear  to  me 
that  such  destroys  the  patent.' 

The  question  of  public  user  arose  in  the  case  of  Heath  v. 
Smith  (2  W.  P.  C.  268).  An  action  for  the  infringement 
of  a  patent  under  which  the  invention  claimed  was  an  im- 
proved method  of  making  cast  steel,  by  fusing  carburet  of 
manganese  along  with  common  iron  or  steel.  It  was 
proved  at  the  trial  that  five  manufacturers  of  steel  had 
used  substantially  the  process  patented  by  the  plaintiff 
before  the  date  of  his  patent,  not  by  way  of  experiment, 
but  in  the  way  of  their  trade,  and  to  the  extent  of  hundreds 
of  tons.  Two  of  the  manufacturers  had  kept  the  process  a 
secret.  The  other  three  had  openly  practised  it ;  but  it  had 
not  become  generally  known,  and  the  trade  was  not  made 
acquainted  with  it  until  the  plaintiff  took  out  his  patent. 
It  was  held,  after  argument,  by  the  Court  of  Queen's 
Bench,  that  there  had  been  a  public  use  of  the  process,  and 
that  the  patent  was,  therefore,  invalid.  One  of  the  judges 
pointed  out  this  consequence  of  an  opposite  decision,  that 
a  man  who  made  a  discovery  would  be  obliged  to  take  out 
a  patent  for  it  in  order  to  free  himself  from  liability  to 
action  in  the  event  of  another  man  making  the  same  dis- 
covery and  procuring  a  patent.  The  process  adopted  by 
the  five  manufacturers  was  to  place  iron,  manganese,  and 
carbon  in  a  crucible.  The  application  of  heat,  according 
to  the  scientific  witnesses,  made  first  a  carburet  of  man- 
ganese, and  then  made  that  substance  unite  with  the  iron. 
Now  the  Court  of  Exchequer  Chamber  had  previously  held 


44  NOVELTY 

tlmt  this  process  was  an  infringement  of  the  patent,  the 
specification  of  \\hich  claimed  '  the  use  of  carburet  of  nian- 
ganese  in  any  process  for  the  conversion  <>f  iron  into  east 
steel;'  for  although  the  plaintiff  only  mentioned  carl 
as  a  well-known  substance  which  he  put  into  the 
his  patent  was   held  to  cover   every  mode   of  operating 
whereby  carburet  of  manganese,  however  formed,  was  made 
to  act  upon  iron.     The  result  1>\  the  two  processes  was 
identical.     The  process  used  by  Smith,  tin-  defendant  in 
thi-  action,  was  .similar  to  that  of  the  five  manufacturers. 
If  it  was  the  same  as  the  plain  tiffs,  he  had  a  good  defence; 
for  the  process  was  not  new,  and  the  plaintiffs  patent  was 
invalid  :  if  it  was  not  the  same  as  the  plaintiffs,  then  t 
was  no  infringement. 

When-  the  drlVndants  at  the  trial  of  an  action  for  the 
infringement  of  a  patent  for  a  method  of  manufacturing 
penholders  proved  that  they  had  made  penholders  accord- 
ing to  the  method  which  the  plaintiff  afterwards  patented, 
and  that  such  penholders  had  been  placed  in  their  ware- 
house for  sale,  though  no  sale  was  proved.  >;>  •/.  Jervis, 
< '.  •!.,  the  presiding  judge,  held  that  the  plaintiffs  invention 
was  destitute  of  novelty.  (Mullht*  \.  Hurt,  :J  Car.  A:  K. 
297.) 

The  sale  in  England  of  articles  made  abroad  is  an  anti- 
cipation of  a  subsequently  patented  invention.  (Jensen  v. 
Xmith,  2  R.  P.  C.  249.) 

The  following  later  cases  on  the  subject  of  prior  user 
may  be  referred  to:  ('r»i/x<l<il-  \.  Fisher,  I  R.  P.  C.  17; 

7  •'/••/•••/.<//    v.    Hirlitirtlxon,    1    P».  P.  ('.  16">  ;   Lixd-r  \.  \<>rt»ti, 

8  R.  P.  C.  199 ;  7Ww»iv  v.  HViV//,/,  5  R.  P.  C.  880. 

It  was  decided  by  V.  <  .  J:<i«>n  in  the  case  of  JloU»  v. 
-  iL.  II.  10  Ch.  D.  268)  that  the  prior  user  of  an  in- 
vention in  a  colony  does  not  affect  the  validity  of  a  patent 
subsequently  obtained  for  the  same  invention  in  the  United 
Kingdom. 

But,  in  order  to  break  down  the  patent  of  the  person 
who  was  de  facto  the  first  to  produce  a  useful  article  by  the 


NOVELTY  45 

patented  process,  the  fact  of  anticipation,  if  that  is  relied 
on,  must  be  very  clearly  made  out.  (Von  Hcyden  v.  Neustadt, 
50  L.  J.  N.  s.  Ch.  126.) 

When  previous  public  user  of  the  invention  is  relied 
upon  as  ground  of  the  invalidity  of  a  patent,  it  is  not 
necessary  to  show  that  such  user  continued  up  to  the  time 
of  the  patent  being  granted.  Even  if  discontinued,  the 
patent  will  be  invalidated.  (The  Househill  Co.  v.  Neilson, 
1  W.  P.  C.  709,  in  the  House  of  Lords.  And  see  the  remarks 
of  Sir  W.  P.  Wood,  V.  C.,  on  Jones  v.  Pearce  in  Tangye  v. 
Stott,  14  W.  R.  386,  as  well  as  the  case  of  King,  Brown  d- 
Co.  v.  Anglo-American  Brush  Corporation,  6  E.  P.  C.  414.) 
Their  lordships,  however,  in  delivering  judgment  in  the  first 
of  these  cases,  expressly  left  it  an  open  question  whether  a 
patent  for  an  invention  would  or  would  not  stand,  if  a 
similar  invention  had  formerly  been  in  use  but  had  ceased 
to  be  used  long  before  the  date  of  the  patent,  and  the  thing 
had  been  completely  lost  sight  of  until  discovered  again 
and  patented. 

Secret  User,  from  which  the  inventor  derives  a  profit, 
and  being  not  merely  a  user  by  way  of  experiment,  will 
certainly  deprive  his  after-acquired  patent  of  its  validity. 
But  there  is  still  the  question  whether  prior  secret  user  by 
someone  other  than  the  patentee  is  sufficient  to  vitiate  a 
patent.  This  point  has  never  been  judicially  decided  in  an 
English  court ;  but  we  have  a  dictum  of  Mr.  Justice  Erie, 
uttered  in  the  above  case  of  Heath  v.  Smith  :  '  If  one  party 
only,'  said  that  learned  judge, '  had  used  the  process,  and 
had  brought  out  the  article  for  profit,  and  kept  the  method 
entirely  secret,  I  am  not  prepared  to  say  that  then  the 
patent  would  have  been  valid.'  Tennant's  case  (ante,  p.  33) 
may  be  referred  to,  as  well  as  Lord  Abinger's  remark  in 
Carpenter  v.  Smith  (ante,  p.  37)  and  the  note  on  page  38. 

Fraud. — By  the  thirty-fifth  section  of  the  Patents  Act  of 
1883  it  is  enacted  that  a  patent  granted  to  the  true  and 
first  inventor  shall  not  be  invalidated  by  an  application  in 
fraud  of  him,  or  by  provisional  protection  obtained  thereon, 


46  NOVELTY 

or  by  any  use  or  publication  of  th<  in\.  ntion  sulweqnent  to 
that  fraudulent  application  during  tin-  j)eriod  of  provisional 
protection. 

Alxinilor  i-'nncnt*  <>/  <•///<  r  /'••;•*«  »n*. — A  pat. 

not  invalidated  by  the  fact  that  jH-rsons  oth«  r  than  tin- 
patentee  had  previously  made  experiments  in  the  direction 
of  the  invention,  if  such  experiments  did  not  result  in  tin- 
utilization  of  the  discovery.  Few  pat«-nt*.  indeed,  could  be 
sustained  if  previous  experiments,  approaching  the  patented 
invention,  \\<  n  h.  1<1  to  vitiate  them.  In  almost  every  case 
experiments  of  some  kind  or  other  have  been  made  in  the 
same  track,  and  many  beneficial  inventions  have  l>«-en  hut 
a  step  beyond  what  has  before  been  reached  by  experiments 
which  seemed  fruitless,  and  were  abandoned. 

The  question  whether  the  evidence  amounts  to  proof 
of  public  use,  or  whether  it  only  proves  that  abandoned 
experiments  had  been  mode,  is  frequently  of  considerable 
delicacy ;  since,  as  it  has  been  remarked  from  the  Bench,  a 
slight  difference  in  the  evidence  will  establish  either  the 
one  proposition  or  the  other.  (Corninh  v.  Kcrnr,  1.  W.  P.  C. 
519.) 

In  n«Unic«ii  v.  />'/,«„/,./,  (1  W.  P.  C.  525),  TiiM.  C.  •/., 
said,  '  A  mere  experiment,  or  a  mere  course  of  experim 
for  the  purpose  of  producing  a  result  which  is  not  brought 
to  its  completion,  but  begins  and  ends  in  uncertain  experi- 
ments, that  is  not  such  an  invention  as  should  pr« 
another  person,  who  is  more  successful,  or  pursues  with 
greater  industry  the  chain  in  the  line  which  has  been  laid 
out  for  him  by  the  preceding  inventor,  from  availing  himself 
of  it  and  having  the  benefit  of  it.  ...  That  there  had  been 
many  experiments  made  upon  the  same  line,  and  almost 
tending,  if  not  entirely,  to  the  same  result,  is  clear  from  the 
testimony  you  have  heard  ;  and  that  these  were  experiments 
known  to  various  persons.  But  if  they  rested  on  experi- 
ment only,  and  had  not  attained  the  object  for  which  the 
patent  was  taken  out,  mere  experiment,  afterwards  supposed 
by  the  parties  to  be  fruitless,  and  abandoned  because  they 
had  not  brought  it  to  a  complete  result,  that  will  not  prevent 


NOVELTY  47 

a  more  successful  competitor  who  may  avail  himself,  so  far 
as  his  predecessors  have  gone,  of  their  discoveries,  and  add 
the  last  link  of  improvement  in  bringing  it  to  perfection.' 
See  also  the  observations  of  the  same  learned  judge  in 
Cornish  v.  Keene  (1  W.  P.  C.  508). 

In  Jones  v.  Pearce  (I  W.  P.  C.  124),  an  action  brought 
for  an  infringement  of  a  patent  for  an  improved  construction 
of  carriage-wheels,  the  defendants  contended  that  wheels 
similar  in  principle  to  those  for  which  the  patent  had  been 
obtained  had  been  invented  several  years  previously  by  a 
Mr.  Strutt,  made  under  his  orders,  and  used  in  a  cart  em- 
ployed on  the  public  roads  for  upwards  of  a  year.  These 
wheels  were  afterwards  laid  by,  the  spokes  having  occasion- 
ally got  bent.  Patteson,  J.,  told  the  jury  that  if  '  you  are 
of  opinion  that  Mr.  Strutt's  wheel  was  an  experiment,  and 
that  he  found  it  did  not  answer,  and  ceased  to  use  it  alto- 
gether, and  abandoned  it  as  useless,  and  nobody  else  fol- 
lowed it  up,  and  that  the  plaintiffs  invention,  which  came 
afterwards,  was  his  own  invention,  and  remedied  the  defects 
of  Mr.  Strutt's  wheel,  then  there  is  no  reason  for  saying 
that  the  plaintiff's  patent  is  not  good.' 

On  the  trial  of  an  action  for  infringing  a  patent  for  im- 
provements in  cards  for  carding  fibrous  substances,  which 
improvements  consisted  in  using  caoutchouc  as  a  substitute 
for  leather  as  an  elastic  bed  in  which  the  teeth  were  fixed, 
it  was  given  in  evidence,  in  support  of  a  plea  denying  the 
novelty  of  the  invention,  that  a  certain  material,  called 
Hancock's  patent  leather,  had  been  made  and  sold  previ- 
ously to  the  patent ;  and  it  was  suggested,  rather  than 
proved,  that  this  material  was  substantially  the  same  thing 
as  the  elastic  bed  in  which  the  carding  teeth  were  fixed.  It 
appeared  that  the  patent  leather  had  been  supplied  to- 
certain  manufacturing  firms,  during  the  space  of  about  a 
year  and  a  half,  several  years  before  the  date  of  the  patent, 
and  that  it  had  been  used  in  the  construction  of  cards,  but 
had  not  been  employed  for  that  purpose  since  that  time. 
*  Supposing,'  said  Cresswell,  J.,  to  the  jury  'that  the  article 
(Hancock's  patent  leather)  did  embody  the  principle  of  the 


48 

1'laintitT,  BO  aa  to  present  to  persons  u-ii.:-  it  ; 
qualities,  and  advantages  in  principle  of  Unit  article  , 
tin  plaintiff  makes,  the  queHtimi   for  you  will  he,  \\] 
that  user  is  not  to  I..-  coii~id.-rcd  ratln  r  in  tli-  of  an 

experiment,  than  of  any  public   u-^e  of  the  article,  BO  as  to 
deprive  the  plaintiff  of  the  fruit  of  In  in  respect 

of  this  miinufiu-ture.'  ( H 'niton  v.  Itatfnian,  1  \\ .  1'.  (  .  519.) 
At  the  trial  of  .sv. ././  v.  Williams  cl  \\.  V.  ('.  1 :»:,..  <  reu- 
/r«7/,  ./.,  said  to  the  jury,  'I  take  it  that  there  is  a  great 
difference  between  the  knowledge  of  an  invention  as  a  thing 
that  would  answer  and  was  in  use,  and  the  knowledge  of  it 
as  a  nun  experiment  that  had  been  found  to  be  a  failure, 
and  thrown  aside.  If  a  person  has  had  a  scheme  in  his 
head  and  has  carried  it  out,  hut  after  a  trial  has  thrown  it 
aside,  and  the  thing  is  forgotten  and  gone  by,  then  another 
person  re-introducing  it  may,  within  the  meaning  of  tin- 
Act,  be  the  inventor  and  the  first  user  of  it,  so  as  to  justify 
a  patent.' 

In  the  case  of  Tanay,-  \.  St,,tt  (\\.  N.  1866,  p.  68),  it 
appeared  that  the  plaintiff  was  the  assignee  of  a  patent  ob- 
tained for  improvements  in  pulley-blocks,  and  that  pn 
to  the  patent  there  had  been  described  in  a  book  a  pulley 
similar  in  principle  to  that  patented,  from  which  description 
one  Moore  had  made  a  pulley.  This  he  had  tried  a  few 
tunes  and  then  laid  aside.  The  defendant  had  also  made  a 
pulley  from  the  description  in  the  book.  It  was  held,  how- 
ever, that  although  the  principle  had  been  made  known,  the 
facts  above  mentioned  were  of  the  nature  of  experirn< 
and  that  as  the  patentee  was  the  first  to  carry  the  invention 
fully  into  effect  his  patent  was  good. 

In  Jlill*  v.  Liatilnii  fi'fix  Liaht  Co.  (5  H.  &  X.  312)  it 
appeared  that  Mr.  Croll  had  purified  many  thousand  feet 
of  gas  by  a  mode  for  which  Hills  subsequently  obtained  a 
patent,  and  this  gas  was  sold.  The  jury,  on  the  trial  of  an 
action  brought  by  Hills  for  the  infringement  of  his  patent, 
found  that  this  was  by  way  of  experiment,  and  the  Court 
refused  to  disturb  the  verdict.  In  delivering  judgment  on 
the  defendants'  rule  for  a  new  trial,  the  Court  said,  '  The 


NOVELTY  49 

word  "  experiment,"  in  the  cases  referred  to,  has  been  used, 
not  as  the  sole  test  upon  a  matter  of  this  sort,  but  as  in- 
dicating a  class  of  practice,  and  for  the  purpose  of  showing 
that  if  there  has  been  a  user  of  an  invention  not  of  a  sub- 
stantial character,  but  in  the  character  of  an  experiment, 
then,  although  the  thing  has  been  done  before,  it  does  not 
preclude  a  person  from  taking  out  a  patent  for  it ;  so  that 
although  what  Croll  did  may  not  have  been  strictly  in  the 
nature  of  an  experiment,  still  the  jury  have  so  found  it,  and 
we  cannot  grant  a  new  trial.' 

Other  cases  bearing  upon  the  question  of  prior  experi- 
mental user  are  Brereton  v.  Richardson  (1  E.  P.  C.  165)  ; 
Moseley  v.  Victoria  Rubber  Co.  (4  E.  P.  C.  253) ;  Morgan  v. 
Windover  (4  E.  P.  C.  417) ;  S.  C.  on  Appeal  (5  E.  P.  C. 
295) ;  and  in  H.  of  L.,  7  E.  P.  C.  130 ;  Edison  and  Swan 
Co.  v.  Holland,  Court  of  Appeal  (6  E,  P.  C.  277,  283) ;  Winby 
v.  Manchester,  d-c.,  Tramways  Co.  (6  E.  P.  C.  359). 

Prior  Imperfect  Machines. — The  fact  that  there  had  pre- 
viously been  made  a  machine  which  turned  out  a  failure 
will  not  invalidate  the  right  of  a  patentee  who  has  made 
a  successful  machine  with  the  same  object,  although  there 
may  be  a  certain  degree  of  similarity  between  some  of 
the  details  of  the  two  machines  (Murray  v.  Clayton,  7 
L.  E.  Ch.  570).  And  in  Barlow  v.  Baylis  (1  Griff.  P.  C. 
44),  where  a  machine,  alleged  to  be  an  anticipation  of  a 
patented  machine,  was  shown  to  have  been  so  imperfect 
as  to  be  incapable  of  doing  the  promised  work  '  more  or 
less  badly,'  it  was  held  not  to  have  deprived  the  later 
machine  of  the  attribute  of  novelty. 

Earlier  Inventions  having  a  similar  object. — It  is  some- 
times argued  that  a  patentee  is  not  to  be  deemed  the  true 
and  first  inventor,  if  a  patent  for  a  similar  object  had  been 
previously  obtained  by  another  inventor ;  but  this  contention 
will  not  prevail  when  it  can  be  shown  that  the  earlier 
patentee  had  not  secured  the  principle,  and  that  the  means 
by  which  the  object  is  attempted  to  be  accomplished  are 
substantially  different  in  the  two  cases. 

Kneller  obtained   a  patent   for  an   apparatus  for  the 

E 


50  NOVEL 

evaporation  of  liquids  and  solutions  at  a  low  temperature. 
The  apparatus  consisted  of  pipes  or  tubes,  alon-  \\  hi.-h  air 
was  forced  nearly  to  the  bottom  of  the  vessel  containing  the 
li. I u ill  to  bo  evaporated,  which  air,  passing  through  small 
holes  in  the  submerged  tubes,  traversed  the  liquid  and  car- 
ried off  the  aqueous  particles.  The  invalidity  of  this  \<. 
was  attempted  to  be  proved  by  showing  that  an  i 
having  a  similar  object  in  view  had  been  previously  patc-i 
But  when  it  appeared  that  the  earlier  invention  consisted 
in  propelling  a  quantity  of  heated  air  into  the  lower  part  of 
the  vessel  containing  the  liquid,  and  causing  such  air  to 
pass  through  the  liquid  in  streams,  by  means  of  a  perforated 
coil  of  pipe  or  colander,  the  jury  found  that,  although  the 
principle  of  both  inventions  consisted  in  forcing  air  in  finely 
divided  streams  through  a  fluid,  for  the  purpose  of  facili- 
tating evaporation,  yet  the  modes  by  which  this  was  effected 
in  the  two  cases  were  sufficiently  distinct  to  acquit  the  latter 
invention  of  being  a  piracy  of  the  former :  and  that  the 
latter  patent  was  not  invalidated  by  reason  of  want  of 
novelty  in  the  invention.  The  Court  was  of  the  same 
opinion,  upon  the  application  for  a  rule  to  set  this  v« 
aside.  (Hull-it  v.  /%«<-,  1  Carp.  Rep.  501 ;  2  B.  and  A. 
870.) 

In  Mhit,-r  v.  Mmrrr  (1  W.  P.  C.  140)  it  appeared  that 
the  plaintiff  had  taken  out  a  patent  for  an  improvement  in 
reclining  chairs,  which  consisted  in  the  application  of  a  self- 
adjusting  leverage  to  the  back  and  seat  of  a  chair,  whereby 
the  weight  on  the  seat  acted  as  a  counterbalance  to  the 
pressure  against  the  back.  Mower,  the  defendant,  made 
chairs  in  imitation  of  Minter's  chair,  and  contended,  in  an 
action  for  an  infringement  of  the  patent,  that  the  plaintiff 
was  not  the  lir>t  and  true  inventor,  alleging  that  one  Brown 
had,  previously  to  the  patent,  made  chairs  embodying  a 
similar  principle.  It  appeared,  however,  that  although 
Brown's  chair  contained  a  similar  principle  to  that  patented, 
it  was  encumbered  with  machinery  which  rendered  it  a  very 
different  thing  from  the  plaintiff's.  Lord  Itcnnmn  said  that, 
supposing  Brown's  chair  to  have  been  a  chair  with  a  self- 


NOVELTY  51 

adjusting  leverage  (i.e.  a  chair  similar  to  the  plaintiffs),  if 
the  encumbering  additional  part  had  been  away,  'then  the 
question  is,  whether  the  principle  of  self- adjustment  was  at 
all  discoverable  or  thought  of  at  that  time.  Because,  it 
seems  to  me,  if  that  principle  might  have  been  deduced 
from  the  machinery  of  the  chair  that  was  made,  but  it  was 
so  encumbered  and  connected  with  other  machinery  that 
nobody  did  make  that  discovery,  or  ever  found  out  that  they 
could  have  a  chair  with  a  self-adjusting  leverage,  by  reason 
of  that  or  any  other  defect  in  the  chair  actually  made  ;  it 
seems  to  me  that  does  not  prevent  this  from  being  a  new 
invention,  when  the  plaintiff  says,  I  have  discovered, 
throwing  aside  everything  but  this  self-adjusting  leverage 
itself,  something  that  will  produce  an  effect,  which  I  think 
a  very  beneficial  one.' 

PUBLICATION   IN   PRINTED  BOOKS. 

It  has  been  repeatedly  held  that  an  inventor's  claim  to 
novelty  is  destroyed  by  showing  the  previous  publication  of 
the  invention  in  some  printed  book  in  use  in  Great  Britain. 
Mr.  Justice  Buller,  in  Rex  v.  Arkicright  (1  W.  P.  C.  72), 
said,  '  It  is  admitted  that  this  is  not  a  new  discovery  ;  for 
Emmerson's  book  was  produced,  which  was  printed  a  third 
time  in  the  year  1773,  and  that  is  precisely  the  same  as 
this.'  '  Although '  (said  Tindal,  C.  J.,  in  Cornish  v.  Keene, 
1  W.  P.  C.  507)  '  it  is  proved  that  the  invention  is  a  new 
discovery,  so  far  as  the  world  is  concerned,  yet  if  anybody 
has  been  able  to  show  that  although  that  was  new — that  the 
party  who  got  the  patent  was  not  the  man  whose  ingenuity 
first  discovered  it,  that  he  had  borrowed  it  from  A  or  B,  or 
taken  it  from  a  book  printed  in  England,  and  which  was 
open  to  all  the  world — then  it  would  become  an  important 
question  whether  he  was  the  first  and  original  inventor  of 
it.'  In  the  course  of  the  argument  of  the  case  of  The  House- 
hill  Company  v.  Neilson  (1  W.  P.  C.  673),  an  appeal  from 
the  Court  of  Session  in  Scotland  to  the  House  of  Lords, 
Lyndhurst,  L.  C.,  asked,  '  If  the  machine  is  published  in  a 
book,  distinctly  and  closely  described,  corresponding  with 


51 

i.-srription  in  the  sp«  of  tin-  patent,  though  it 

has  never  been  actually  worked,  is  not  that  an  answer  to 

patent  ?    It  is  continually  tin*  practice   on  trial*  for 

patents  to  read  out  <>f  printed  books,  without  re  to 

anything  tluit  luis  been  done.' 

If  the  foreign  book  containing  a  description  of  an  im 
tion  has  been  circulated  in   Kn^litml  i. /.'<//.  v.  > 
ton's  Lond.  Jour.  vol.  xl.  p.  71),  or  «  v. n  if  only  four  copies 
of  the  fon-i^n  lKX)k  are  sent  .  a  bookseller  in  this 

country  and  by  him  exposed  for  sale,  only  one  being  ac- 
tually sold  to  a  public  library  (I.<in;i  '.11  Bear. 
189),  a  patent  subsequently  obtained   by  an  indepen 
inventor  is  invalid. 

However,  win  r<-  tin-  book  relied  upon  as  evidence  of  a 
disclosure  before  the  date  of  his  patent  of  the  patentee's  in- 
vention, a  skate,  was  an  American  book  containing  a  copy 
of  a  drawing  <>f  the  skate  attached  to  tin-  pa  ten  tee's  Amti 
patent,  and  which  book  had  been  received  by  a  librarian  of 
the  Patent  Office  Library  in  London  about  thirty-h 
days  before  the  date  of  the  English  patent  without  bcin^ 
entered  either  in  the  list  of  donations  or  in  the  catalogue  of 
tlu-  library,  and  nothing  more  was  known  of  it  until  another 
librarian  found  it  many  months  afterwards  on  a  shelf  in  a 
corridor  leading  to  the  public  room,  which  corridor  was 
open  to  the  public,  all  this  was  held  by  sir  <i.  •/•  >•>••  /.  M.  /,'.. 
and  afterwards  by  the  Court  of  Appeal,  not  to  prove  a  pub- 
lication sufficient  to  invalidate  the  patent.  (Plimpton  \. 
,s>///<>r,  L.  R.  6  Ch.  D.  412.) 

In  the  case  of  Ott,,  \.  St.-,-l  (31  Ch.  D.  241,  and  3  R.  P.  C. 
112)  Mr.  JH*  held  that  the  simple  fact  that  a 

copy  of  a  French  book  was  in  the  inner  library  of  tin- 
British  Museum  was  not  sufficient  publication  to  lead  to 
the  inference  that  whatever  was  found  in  that  book  had 
become  part  of  the  public  stock  of  common  knowlt 

Two  specifications  in  the  German  language  of  German 
patents,  with  drawings,  were  deposited  in  the  Library  of 
the  Patent  Office,  London,  the  one  more  than  two  years, 
the  other  forty  days,  before  the  date  of  a  British  patent,  and 


NOVELTY  53 

entries  of  these  specifications  were  published  in  the  official 
Patents  Journal  and  their  subject-matter  stated,  a  footnote 
being  appended  to  the  effect  that  the  specifications  might 
be  seen  in  the  Library.  It  was  held  that  this  amounted  to 
a  publication  of  the  inventions  in  this  country.  (Harris  v. 
Rothwett,  31  Ch.  D.  416 ;  S.  C.  3  E.  P.  C.  383 ;  4  E.  P.  C.  225.) 

It  may  be  inferred  from  some  of  the  preceding  cases 
that  when  the  validity  of  a  patent  is  contested  on  the  ground 
of  the  invention  having  been  previously  communicated  to 
the  world  by  a  book,  it  is  not  necessary  to  show  that  the 
patentee  derived  his  knowledge  of  the  invention  from  such 
book.  And  it  was  expressly  decided  in  Stead  v.  Williams 
(2  W.  P.  C.  142),  that  if  the  invention  has  been  already 
made  public  by  any  description  contained  in  a  work,  whether 
written  or  printed,  which  has  been  publicly  circulated,  in 
such  case  the  patentee  is  not  the  true  and  first  inventor 
within  the  meaning  of  the  statute,  whether  he  has  himself 
borrowed  his  invention  from  such  publication  or  not ;  be- 
cause the  public  cannot  be  precluded  from  the  right  of  using 
such  information  as  they  were  already  possessed  of  at  the 
time  the  patent  was  granted. 

The  application  of  this  rule  must  depend  upon  the  par- 
ticular circumstances  of  each  case.  The  existence  of  a  single 
•copy  of  the  work  in  a  depository  where  it  had  long  been 
kept  in  a  state  of  obscurity,  would  afford  a  very  different 
inference  from  the  production  of  an  encyclopaedia  or  other 
work  in  general  circulation.  The  question  will  be,  whether, 
upon  the  whole  evidence,  there  has  been  such  a  publication 
as  to  make  the  description  a  part  of  the  public  stock  of  in- 
formation. (See  also  Plimpton  v.  Malcolmson,  L.  E.  3  Ch. 
D.  531;  Plimpton  v.  Spiller,  L.  E.  6  Ch.  D.  412;  Von 
Heyden  v.  Nemtadt,  50  L.  J.  N.  s.  Ch.  126 ;  United  Telephone 
Co.  v.  Harrison,  L.  E.  21  Ch.  D.  721.) 

If  a  published  drawing  of  a  machine  is  sufficient  of 
itself  to  enable  a  mechanist  to  construct  the  machine,  that 
would  be  enough  to  invalidate  a  subsequent  patent  for  a 
similar  machine.  (Per  Lord  Esher,  M.  E.,  in  Hen-burger 
T.  Squire,  on  Appeal,  6  E.  P.  C.  198.) 


54  NOVELTY 

PUBLICATION   IX  THE   SPECIFICATION   CXUER  A   PBIOft  PATKXT. 

The  law  as  regards  the  publication  of  th<  in\.  uti-n  in 
the  ppn-ifinition  umlt-r  n  prior  pat.  nt  is  precisely  the  same 
as  that  with  •  t<>  :i  ]>ul<li<  .t!i<>n  in  a  printed  book. 

The  invention  lias  lx-«  n  <1«  privc-d  of  its  n  .juisit<-  attrilmteof 
novelty  if  it  has  heen  described  in  u  iMvvious  specification, 
wlu -tlicr  the  patent  has  or  has  not  expired.1  If,  prior  to  his 
obtaining  a  patent,  any  part  of  that  which  is  of  the  sub- 
stance of  tin-  invention  has  been  communicated  to  t)x> 
puMic  in  the  shape  of  a  specification  of  any  other  pnv 
he  cannot  claim  the  benefit  of  his  patent.  '/•/»- 

borowjlt,  in  llmUlirt  \.  (iriiintlmic,  1  \\.  P.  C.  86;  and  see 
r,  1  W.  P.  C.  550.) 

In  the  case  of  Mnmntnam  v.  //"'  -I  \V.  P.  C.  128),  an 
action  for  the  infringement  of  a  patent  for  a  method  of 
paving  struts  \\ith  blocks  in  tlu>  form  of  two  solid  rhombs 
placed  one  in  front  of  the  other,  in  opposite  directions,  so 
that  each  side  of  a  block  was  bevelled  both  inwards  and 
outwards ;  it  was  proved  that  the  defendant  used  blocks, 
each  consisting  of  a  single  solid  rhomb,  and  tin  n  fastened 
two  together  by  pins,  so  that  two  of  the  defendant's  blocks 
thus  fastened  exactly  resembled  one  of  the  plaintiff's  blocks. 
This  was  the  infringement  complained  of.  The  defendant, 
at  the  trial,  put  in  the  specification  of  an  expired  patent, 
obtained  by  one  M'Arthy,  for  a  pavement  in  which  each 
block  had  two  levels  inwards  and  two  outwards  on  the 
same  side.  If  M'Arthy's  block  were  cut  into  two,  it  would 
make  two  blocks  similar  to  the  plaintiff 's  ;  if  cut  into  four, 
it  would  make  four  blocks  similar  to  the  defendant's.  Both 
judge  and  jury  thought  that,  under  the  circumstances,  the 
plaintiff's  invention  was  destitute  of  novelty.  The  plaintiff 
asserted  that  the  defendant  had  infringed  his  patent  by 

1  The  operation  of  this  Rale  is  now  narrowed  by  Art.  4  of  the  Inter- 
national Convention,  and  by  Sect.  103  of  the  Patents  Act,  1883.  Any  person 
who  has  duly  registered  an  application  for  a  patent  in  any  of  the  States  of 
the  Union  enjoys  a  right  of  priority  to  a  British  patent  for  a  period  of  seven 
months  from  the  date  of  his  foreign  application,  although  the  invention 
may  have  been  meanwhile  published  or  used  in  this  country. 


NOVELTY  55 

cutting  his  block  into  two.  The  defendant  showed  that 
the  plaintiff,  in  forming  his  block,  had  only  cut  M'Arthy's 
block  into  two.  The  plaintiff,  in  support  of  his  own  patent, 
was  bound  to  contend  that  M'Arthy's  invention  and  his 
own  were  distinct ;  but  then  if  he  established  that,  it  fol- 
lowed that  his  own  and  the  defendant's  were  likewise  distinct, 
in  which  case  there  was  no  infringement. 

Even  the  specification  under  a  worthless  patent  might 
sufficiently  disclose  the  invention  so  as  to  anticipate  a  sub- 
sequent patent.  (Per  Lord  Halsbury,  C.,  in  Kaye  v.  Chubb, 
5  E,  P.  C.  648.) 

But  if  the  prior  inventor  had  not  shown  how  the 
invention  is  to  be  practically  carried  out,  and  an  indepen- 
dent inventor  does  this  and  fully  explains  the  mode  in 
which  the  result  is  obtainable,  his  patent  will  be  held  good. 
In  the  case  of  Betts  v.  Menzies  (10  H.  L.  C.  117)  it  was 
held  that  a  general  description  in  a  prior  specification  or  in 
a  published  book,  even  if  suggesting  information  or  involving 
some  speculative  theory  pertinent  to  the  invention  in  ques- 
tion, is  not  to  be  considered  as  anticipating  a  subsequent 
patent  involving  a  practical  invention  unless  the  antecedent 
publication  contains  the  same  amount  of  practical  and 
useful  information.  Betts's  patent  was  for  the  production 
of  a  material  capable  of  application  to  many  useful  pur- 
poses by  combining  thin  sheets  of  lead  and  tin  by  means  of 
pressure.  It  appeared  that  as  far  back  as  1804  one  Dobbs 
had  patented  a  process  for  making  a  new  material  by  com- 
bining lead  and  tin  by  pressure,  but  he  did  not  with  any 
precision  define  the  relative  thicknesses  of  the  sheets  of 
metal  nor  the  degree  of  pressure  to  be  applied,  whereas  Mr. 
Betts  entered  minutely  into  those  points.  Moreover,  it  was 
not  shown  that  the  earlier  process  had  ever  been  carried 
into  practice.  Under  these  circumstances  the  House  of 
Lords  held  that  Betts's  invention  had  not  been  anticipated. 
See  also  the  observations  of  Wood,  V.  C.,  in  the  subsequent 
case  of  Betts  v.  De  Vitre  (11  L.  T.  N.  s.  445),  in  which  the 
validity  of  the  same  patent  was  in  question. 

Under  a  patent  for  the  purification  of  gas,  Mr.  Croll 


5f,  NOVELTY 

claimed  the  use  of  oxides  of  iron,  which  expression  was  held 
to  mean  hoth  hydratcd  and  anhydrous  oxides  of  iron.     Mr. 
Hills  afterwards  obtained  a  patent  for  the  use  of  anh>  i 
oxide  of  iron  for  the  same  purpose ;  but  it  was  said,  in  an 
action  which  he  brought  fur  the  infringement  of  his  pa1 
that  he  had  been  anticipated  by  Croll.     On  his  part  it  was 
argued  that  as  it  was  a  fact  that  M>m.  <>xi«l«->  would  answer 
tii.  object  in  view,  and  some  would  not,  it  became  a  subj< rt 
for  investigation  and  experiment  to  ascertain  what  oxides  it 
would  be  proper  to  employ,  and  that  when  he  had  made  the 
discovery  he  was  entitled  to  a  patent  in  respect  of  it.     The 
Court  of  Exchequer  held  that  this  discovery  might  proj 
be  the  subject  of  a  patent.     (Hill*  v.  London  Gat  Liylit 
<      i>any,  5  H.  and  N.  812.) 

If  a  specification  contains  a  general  statement  which 
gives  no  clear  intimation  either  by  its  own  construction  or 
in  the  opinion  of  a  workman  of  ordinary  skill,  either  as  to 
the  result  or  as  to  the  means,  and  if  a  person  should  out  of 
the  general  words  which  describe  nothing  discover  some- 
thing not  inconsistent  with  them  but  not  disclosed  by  them, 
he  may  obtain  a  patent  for  his  discovery.  But  if  in  a 
specification  one  of  the  modes  described  in  it  gives  a  clear 
result  by  clear  means,  although  the  person  who  took  out 
the  patent  does  not  see  that  result,  and  another  person 
by  studying  the  specification  more  carefully  perceives  the 
result,  he  has  no  right  to  take  out  a  patent  for  it.  (Per 
/,../••/  V.  7i..  in  A'n.v  v.  Cltnbb,  4  R.  P.  C.  298.) 

The  antecedent  description  of  an  invention  which  will 
have  the  effect  of  depriving  a  subsequently  patented  inven- 
tion of  the  attribute  of  novelty,  must  (according  to  / 
Wettbury,  C.,  in  llitts  v.  Eran*,  4  De  G.  F.  &  J.  288)  '  be 
such  that  a  person  of  ordinary  knowledge  of  the  subject 
would  at  once  perceive,  understand,  and  be  able  practically 
to  apply  the  discovery,  without  the  necessity  of  making 
further  experiments  and  gaining  further  information,  before 
the  invention  can  be  made  useful.  If  something  remains 
to  be  ascertained  which  is  necessary  for  the  useful  applica- 
tion of  the  discovery,  that  affords  sufficient  room  for  another 


NOVELTY  57. 

valid  patent.  .  .  .  The  information  as  to  the  alleged  inven- 
tion given  by  the  prior  publication  must,  for  the  purposes 
of  practical  utility,  be  equal  to  that  given  by  the  subsequent 
patent.  The  invention  must  be  shown  to  have  been  before 
made  known.  Whatever,  therefore,  is  essential  to  the  in- 
vention must  be  read  out  of  the  prior  publication.  If 
specific  details  are  necessary  for  the  practical  working  and 
real  utility  of  the  alleged  invention,  they  must  be  found 
substantially  in  the  prior  publication.  Apparent  generality, 
or  a  proposition  not  true  to  its  full  extent,  will  not  prejudice 
a  subsequent  statement  which  is  limited  and  accurate,  and 
gives  a  specific  rule  of  practical  application.  .  .  .  Upon 
principle,  therefore,  I  conclude  that  the  prior  knowledge  of 
an  invention  to  avoid  a  patent  must  be  a  knowledge  equal  to 
that  required  to  be  given  by  a  patent,  viz.  such  a  knowledge 
as  will  enable  the  public  to  perceive  the  very  discovery,  and 
to  carry  the  invention  into  practical  use.' 

According  to  L.  J.  Brett,  in  Otto  v.  Linford  (Court  of 
Appeal,  46  L.  T.  N.  s.  39),  the  question  to  be  considered  is 
whether  the  prior  specification,  fairly  read  by  a  person  con- 
versant with  such  matters,  would  give  a  reasonably  clear 
description  of  the  later  invention — that  is,  supposing  it  to 
relate  to  a  machine,  whether  it  would  give  a  reasonably 
clear  description  of  a  machine  that  would  effect  what  the 
machine  of  the  later  inventor  effects.  (See  also  Von  Hey  den 
v.  Neustadt,  50  L.  J.  N.  s.  126  ;  Moseley  v.  Victoria  Rubber 
Co.,  4  E.  P.  C.  252 ;  Bray  v.  Gardner,  4  K.  P.  C.  400 ; 
Haslam  v.  Hall,  5  E.  P.  C.  19  ;  American  Braided  Wire  Co. 
v.  Thomson,  5  E.  P.  C.  122.) 

'  Even  if  there  is  identity  of  language  in  two  specifica- 
tions '  (said  Lord  Westbury,  in  Betts  v.  Menzies,  10  H.  L.  C. 
152),  '  and  (remembering  that  those  specifications  describe 
external  objects)  even  if  the  language  is  verbatim  the  same, 
yet  if  there  are  terms  of  art  found  in  the  one  specification, 
and  also  terms  of  art  found  in  the  other  specification,  it  is 
impossible  to  predicate  of  the  two  with  certainty  that  they 
describe  the  same  identical  external  object,  unless  you 
ascertain  that  the  terms  of  art  used  in  the  one  have  pre- 


58 

cisely  the  same  signification,  and  denote  the  same  external 
objects  at  the  date  of  the  one  specification  as  they  do  at  the 
date  of  the  oth*  r. 

Where  a  provisional  specification  contained  an  incom- 
plete description  of  a  piece  of  mechanism  which  was  omitted 
from  the  complete  specification,  and  another  patent  was 
afterwards  obtained  for  similar  mechanism,  the  passage  in 
the  preceding  patent  was  lu  1<1  not  to  be  a  prior  publication 
so  as  to  vitiate  the  second  patent,  because  the  description 
was  not  sufficient  to  enable  a  workman  to  make  the  object. 

MT  \.  T.xM,  L.  It.  1  Cli.  D.  58.) 


PRIOR   PUBLICATION   BY   INVESTOR. 

We  now  come  to  a  series  of  cases  which  declare  the  law 
with  regard  to  a  publication  of  the  patented  invention  be- 
fore the  date  of  the  patent  —  not  by  persons  other  than  the 
patentee,  but  by  the  patentee  himself.  A  person  may  be 
the  true  and  first  inventor  of  that  for  which  he  has  obtained 
a  patent,  and  yet  he  may  have  disentitled  himself  to  the 
benefit  of  it  by  prior  dealings  with  or  prior  publication  of 
the  invention.  The  law  says  that  a  man  may  not  first 
publish  his  discovery  and  then  obtain  protection  for  it 
against  the  public,  whom  he  has  already  made  acquainted 
with  it.  Having  done  that,  he  has  no  longer  anything  to 
give  as  a  consideration  for  the  grant. 

Some  of  the  cases  will  show  inventors  who  intend  to 
protect  their  inventions  that  they  should  be  extremely 
cautious  how  they  deal  with  them  before  applying  for 
patents. 

An  inventor  does  not  lose  his  right  to  a  patent  by  keep- 
ing his  invention  to  himself  after  its  completion,  provided 
there  is  no  profitable  user  of  it  (lientlcy  v.  !•'!••  mintj,  1  C.  & 
K.  587).  But  it  may  be  remarked  that,  although  not  de- 
structive of  his  right,  delay  is  here  especially  dangerous, 
and  the  fact  might,  under  certain  circumstances,  be  used 
as  a  strong  argument  against  a  patentee. 

In  the  same  case  of  Bentley  v.  Fleming  it  was  held  that 
an  inventor  might  safely  deposit  a  machine  of  his  invention, 


NOVELTY  59 

for  a  reasonable  time,  in  a  room  open  to  the  public,  for  the 
purpose  of  having  its  properties  tested. 

In  Bramali  v.  Hardcastle  (Holroyd,  81),  which  was  an 
action  for  infringing  a  patent  for  a  water-closet,  it  appeared 
that  the  patentee  had  made  two  or  three  of  these  machines 
before  he  obtained  his  patent ;  but  it  wras  admitted  that 
this  fact  would  not  of  itself  invalidate  the  patent.  (See  also 
Lewis  v.  ^Marling,  4  C.  &  P.  57  ;  and  Moss  v.  MaUnys, 
3  E.  P.  C.  378.) 

Where  the  article  had  been  manufactured  for  sale,  and 
offered  for  sale,  although  not  sold,  this  was  held  to  be  such 
a  user  of  the  invention  as  rendered  a  subsequently  obtained 
patent  bad.  (Oxley  v.  Holden,  8  C.  B.  N.  s.  666.) 

Where  delay  occurred  in  the  issue  of  a  patent  without 
the  patentee's  fault,  the  manufacture  by  him  of  articles 
before  the  date  of  the  patent  for  the  purpose  of  being  sold 
after  the  date  was  held  not  to  render  the  patent  invalid. 
(Betts  v.  Mcnzies,  4  Jur.  N.  s.  477.) 

In  Wood  v.  Zimmer  (Holt,  N.  P.  C.  57)  it  appeared  in 
evidence  that  a  great  quantity  of  verdigris  made  according 
to  the  patented  process  had  been  sold  by  the  inventor  in 
the  course  of  four  months  before  the  patent  was  obtained, 
and  Gibbs,  C.  J.,  held  that  '  the  public  sale  of  that  which 
is  afterwards  made  the  subject  of  a  patent,  though  sold  by 
the  inventor  only,  makes  the  patent  void.' 

In  July  1875  a  patent  was  granted  to  Thomas  Muir  for 
improvements  in  the  manufacture  of  meal  and  flour.  On 
the  trial  of  an  action  for  the  infringement  of  this  patent  the 
patentee  himself  proved  that  in  June  1875  he  had  made 
flour  according  to  the  patented  process  and  had  sold  it  in 
the  ordinary  way  of  business.  The  action  was  thereupon 
dismissed.  (Germ  Milling  Co.  v.  llobinson,  3  E.  P.  C.  253, 
and  see  Ee  Adamson's  Patent,  6  De  G.  M.  &  G.  420.) 

Patterson,  one  of  the  three  gas  referees  appointed  by 
the  Board  of  Trade  under  the  City  of  London  Gas  Act  of 
1868,  procured  a  patent  for  an  improved  mode  of  purifying 
coal  gas  on  March  9,  1872.  He  had  obtained  a  knowledge 
of  the  patented  process  in  the  course  of  his  labours  as 


<><>  NOVELTY 

referee,  and  it  appeared  that  it  hod  been  de*« 

tin-"  .  in. -lulling  Patterson,  in  an  official  report, 

which,  though  dated  January  81,  1872,  and  print.  .1  al.out 
that  time,  was  kept  back  from  the  authorities  to  whom  it 
ought  to  have  been  presented  as  soon  as  printed,  until 
March  :!»'..  A  suit  for  an  infringement  of  the  patent  having 
been  decided  in  Patterson's  favour,  the  case  went  before 
the  Court  of  Appeal  (/'HM.-/-X.I//  v.  f/./x  I.'ujht  </»</  < '<>!;••  ('••m- 
JHIHII,  L.  R.  2  Cli.  I>.  812),  ami  then  to  the  House  of  I 
(L.  R.  8  App.  Cas.  239),  where  it  was  hd.l  that  th.  know- 
ledge obtained  in  the  discharge  of  his  duty  by  one  referee, 
and  by  him  communicated  to  bis  colleagues,  became  at 
once  public  property,  and  could  not  be  treated  by  them  as 
confidential,  nor  could  one  of  their  number  take  out  a  patent 
for  it. 

It  was  contended  in  Tlnnn*nn  \.  Hatty  (<J  R.  P.  C.  84) 
that  because  the  patentee  of  an  invention  relating  to  im- 
provements in  the  mariner's  compass  had  previously  iml>- 
lished  a  mathematical  paper  discussing  the  objects  to  be 
aimed  at,  the  difficulties  to  he  overcome,  and  the  condii 
to  be  satisfied  in  all  attempts  to  improve  the  compass,  he 
had  disclosed  his  invention  to  the  public  and  was  not 
afterwards  entitled  to  a  patent.  But  the  judge  at  the  trial 
of  an  action  for  infringement  held  that  what  the  pat« 
had  done  was  very  far  from  disclosing  how  the  prim  i]-l<  s 
enunciated  in  the  paper  were  to  be  realised  in  an  improved 
instrument,  and  that  as  he  had  shown  this  by  his  specifi- 
cation after  much  thought  and  many  experiments,  he  was 
entitled  to  a  patent  for  his  very  useful  invention. 

Confidential  Communications. — If,  however,  the  inventor 
communicates  his  discovery  to  a  few  persons  under  the  bond 
or  seal  of  confidence,  there  is  no  publication.  In  M»r<i<m  \. 
Setcard  (1  W.  P.  C.  194),  an  action  which  arose  out  of 
Galloway's  patent  for  an  improved  method  of  constructing 
paddle-wheels,  it  was  given  in  evidence  that  before  the  date 
of  the  patent,  Curtis,  an  English  engineer,  made  for  Morgan, 
the  managing  director  of  the  Venice  and  Trieste  Company, 
two  pairs  of  wheels  upon  the  principle  mentioned  in  the 


NOVELTY  61 

specification.  Galloway,  the  patentee,  gave  instructions  to 
Curtis  under  an  injunction  of  secrecy,  because  he  was  about 
to  take  out  a  patent.  The  wheels  when  completed  at 
Curtis's  factory  were  not  shown  or  exposed  to  the  view  of 
those  who  might  happen  to  come  there.  After  remaining 
a  short  time  they  were  sent  to  Venice  in  April  1829.  Curtis 
deposed  that  they  were  sold  to  the  company,  without  saying 
by  whom,  and  Morgan  paid  Curtis  for  them.  Galloway 
obtained  a  patent  on  July  22,  1829,  and  it  was  assigned  by 
him  to  Morgan.  Upon  these  facts  it  was  contended  that 
the  invention,  at  the  date  of  the  letters  patent,  was  not 
new,  in  the  legal  sense  of  that  word.  Parke,  B.,  delivered 
the  judgment  of  the  Court  of  Exchequer,  before  whom  the 
point  was  argued,  in  these  words  : — '  The  word  "  manufac- 
ture "  in  the  statute  must  be  construed  in  one  of  two  ways  : 
it  may  mean  the  machine  when  completed,  or  the  mode 
of  constructing  the  machine.  If  it  mean  the  former,  un- 
doubtedly there  has  been  no  use  of  the  machine,  as  a 
machine,  in  England,  either  by  the  patentee  himself  or  any 
other  person ;  nor,  indeed,  any  use  of  the  machine  in  a 
foreign  country  before  the  date  of  the  patent.  If  the  term 
"  manufacture  "  be  construed  to  mean  "the  mode  of  con- 
structing the  machine,"  there  has  been  no  use  or  exercise 
of  it  in  England,  in  any  sense  which  can  be  called  "  public." 
The  wheels  were  constructed  under  the  direction  of  the 
inventor,  by  an  engineer  and  his  servants,  with  an  injunc- 
tion of  secrecy,  on  the  express  ground  that  the  inventor 
was  about  to  take  out  a  patent,  and  that  injunction  was 
observed ;  and  this  makes  the  case,  so  far,  the  same  as  if 
they  had  been  constructed  by  the  inventor's  own  hands,  in 
his  own  private  workshop,  and  no  third  person  had  seen 
them  whilst  in  progress.  The  operation,  indeed,  was  dis- 
closed to  the  plaintiff  Morgan ;  but  there  is  sufficient  evi- 
dence that  Morgan  at  that  time  was  connected  with  the 
inventor,  and  designing  to  take  a  share  in  the  patent.  A 
disclosure  of  the  nature  of  the  invention  to  such  a  person 
under  such  circumstances  must  surely  be  considered  private 
and  confidential.  The  only  remaining  circumstance  is, 


61 

that  Morgan  paid  fur  th«  machines,  with  the  privity  of 
<  ;.tll.'\\.i;-.  on  In-half  of  the  steam  com  pan  i  was 

no  proof  that  he  paid  more  than  the  price  of  the  machines, 
as  for  ordinary  work  of  that  description  :  and  the  jury 
\\Miild  also  be  well  warrant. -d  in  finding  that  he  did  BO  with 
the  intrntion  that  tin-  mwhine  should  be  used  abroad  only 

his  company,  \vhirh.  as  it  carried  on  its  transactions  in 
a  foreign  country,  may  1»«?  considered  as  a  foreign  com) 
...  It  must  l>e  admitted  that  if  the  patentee  himself  had, 
be  for.  •  his  patent,  constructed  machines  for  sale,  as  an 
article  of  commerce,  for  gain  to  himself,  and  been  in  the 
»f  selling  them  publicly — that  is,  to  any  one  of  the 
puhlic  who  would  buy — the  invention  would  not  be  new  at 
tli.  date  of  the  patent.  This  was  laid  down  in  the  case  of 

/v.  '//immi-r.  .  .  .  But  we  do  not  think  that  the  patent 
is  defeated  on  the  ground  of  the  want  of  novelty,  and  the 

ions  public  use  or  exercise  of  it,  by  a  single  instance 
of  a  transaction  such  as  this/  And  see  the  remarks  of 
J..-I.  /•'/•//  in  Hninjihrrxon  v.  Syer  (-1  I:.  I1.  ('  111:  also 
<Iu-  case  of  The  Vseful  1'nlntta  C».  v.  Rylamh  ('2  li.  I 

/  r]),'rimcnti  by  ///«•  1'ntrntee. — It  has  been  decided  that 
\\heii  the  disclosure  of  the  secret  took  place  during  the 
course  of  experiments  made  by  the  patentee  with  : 
<>f  testing  or  improving  the  invention  (such  disclosure  being 
unavoidable  and  not  more  than  was  necessary  for  the  pur- 
.  this  will  not  take  away  the  inventor's  right  to  a 
potent 

Before  applying  for  a  patent  the  inventor  of  a  machine 
entrusted  it  to  a  person  for  the  purpose  of  trying  experi- 
ments, and  it  was  held  that  he  had  not  thereby  made  it 
public.  (Bentlfji  v.  /•'//  >/m/</,  1  Car.  &  K.  578.) 

Shortly  before  an  application  was  made  for  improve- 
ments in  constructing  and  stopping  bottles,  600  dozen 
of  bottles  made  by  the  inventor  according  to  the  specifi- 
cation under  the  patent  subsequently  obtained  were  sent 
to  a  person  as  samples.  It  was  held  by  Mr.  -I* 
Chit  tit  that  they  were  sent  out  by  way  of  experiment,  and 


NOVELTY  63 

that  the  fact  did  not  render  the  patent  invalid.  (The  Useful 
Patents  Co.  v.  Hi/lands,  2  E.  P.  C.  262.) 

Adamson  invented  certain  machinery  whilst  engaged  in 
the  execution  of  a  contract  for  the  erection  of  a  pier.  This 
machinery  he  used  on  the  works  for  four  months  before 
he  applied  for  a  patent.  It  was  held  that  there  had  been 
public  user,  and  not  merely  experiments  inasmuch  as  he 
had  derived  a  profit  from  the  employment  of  the  invention 
after  its  utility  had  been  ascertained,  and  during  all  that 
time  the  public  had  free  access  to  it.  (Re  Adamson's  Patent, 
6  De  G.  M.  &  G.  420.) 

A  series  of  experiments  performed  in  the  presence  of 
others  may  however  be  not  only  successful,  but  also  actually 
of  pecuniary  benefit  to  the  inventor,  and  yet  it  will  not  neces- 
sarily be  held  that  he  has  given  the  invention  to  the  world. 
That  the  coincidence  of  actual  immediate  profit  with  the 
carrying  on  of  experiments  is  not  of  itself  sufficient  to  render 
a  subsequently  obtained  patent  void  was  decided  in  the  case 
of  Newatt  v.  Elliott  (4  C.  B.  N.  s.  269),  where  it  appeared  that 
the  inventor  of  a  machine  for  paying  out  telegraph  wire 
had  not  procured  a  patent  until  after  he  had  laid  down  a 
cable  in  deep  sea  by  means  of  the  machine.  Experiments 
on  dry  land  had  been  indecisive ;  an  opportunity  for  making 
decisive  experiments  was  presented  in  the  course  of  execut- 
ing a  Government  contract  for  laying  down  a  cable  at  sea. 
Such  experiments  were  made,  and  the  Court  held  that  they 
did  not  amount  to  a  gift  of  the  invention  to  the  world. 

PRIOR  PUBLICATION   BY   OTHER  PERSONS. 

The  two  following  cases  will  show  that  prior  publication 
of  the  invention  by  persons  other  than  the  patentee  may 
take  place  without  reference  to  public  user,  or  publication  in 
a  book,  or  specification.  Saxby  obtained  a  patent  in  1874 
for  improvements  in  signalling  apparatus  on  railways.  The 
invention  comprised  a  combination  of  two  old  contrivances 
having  the  same  object  in  view.  To  show  prior  publication 
the  following  facts  were  proved.  The  particular  improvement 
in  question  had  been  previously  suggested  to  the  mind  of  a 


«M  NOVKLTY 

Mr.  Edwards,  who  was  in  the  employment  of  the  Lon<l»n 
and  North-Western  Railway  Company,  mid  \vho,  by  m 
placing  the  two  old  contrivances  side  by  hide,  had  made 
working  drawings,  which  it  was  admitted  showed  a  combina- 
tion substantially  the  same  as  Saxby 's  subsequently  patented 
modification.     Two  sets  of  tracings  were  nm<l>    fn>m   the 
drawings  in  Edwards's  office,  when-  fmir  «»r  live  draughtsmen 
were  kept,  and  tin  y  w«  re  afterwards  sent  to  the  offices  of 
the  L.  <fc  N.  W.  K.  Company  at  Crewe,  where  there 
seventeen  or  eighteen  draughtsmen.     The  general  public 
visited  these  offices,  and  there  was  evidence  that  the  draw- 
ings or  tracings  had  there  been  seen  by  an  engineer  who 
was  not  in  any  way  connected  with  tin    railway  company. 
No  secrecy  or  concealment  was  imposed  or  observed  i; 
gard  to  the  drawings  and  tracings  with  reference  either  to 
the  draughtsmen  in  these  two  offices  or  to  members  of  the 
general  public  who  might  happen  to  visit  them.     Further, 
the  particular  combination  had  been  explained  by  Edwards 
to  a  person  in  Saxby's  employment,  and  rough  sketches  of 
the  drawing  were  left  with  him.     The  drawings  and  tracings 
were  laid  before  the  chief  engineer  of  the  railway  company, 
and  they  were  submitted  to  then-  locomotive  committee. 
Besides  all  this  a  working  apparatus  was  made  from  tin- 
drawings  by  a  person  in  the  employment  of  the  company, 
and  this  was  placed  in  the  pattern-shop,  where  it  was  sub- 
jected to  trial.    All  this  occurred  before  the  end  of  the  year 
1878.     It  was  held  by  a  Divisional  Court,  by  the  Court 
of  Appeal,  and  by  the  House  of  Lords,  that  these  facts 
amounted  to  evidence  of  a  publication  of  the  invention,  that 
such  a  disclosure  of  it  had  been  made  as  placed  it  within 
reach  of  the  public,  and  therefore  that  Saxby's  patent 
was  invalid.     (S<i.rby  v.  (Hnnci-strr   H'aggon  Co.,  2  Griffin 
P.  C.  54.) 

The  defendant  applied  for  a  patent  in  respect  of  a  waste 
water  preventer  in  January  1885,  but  did  not  proceed 
with  his  application.  In  the  next  month  the  plaintiff 
applied  for  a  patent  in  respect  of  what  was  substan- 
tially the  same  invention,  and  in  due  course  a  patent 


NOVELTY  65 

was  granted  to  him.  An  action  for  infringement  having 
been  brought  it  was  proved  that  before  the  date  of  the 
patent  the  defendant  had  openly  exhibited  in  his  shop  to 
at  least  two  persons,  without  any  injunction  of  secrecy,  the 
apparatus  described  by  him  in  his  provisional  specification. 
It  was  held  by  the  Court  of  Appeal  that  there  had  been 
publication  of  the  invention,  and  that  the  patent  was  in- 
valid. (Humpherson  v.  Syer,  4  B.  P.  C.  407.)  In  this  case 
L.  J.  Fry  framed  the  enquiry  in  this  form :  Is  it  the  fair  con- 
clusion from  the  evidence  that  some  English  people,  under 
no  obligation  to  secrecy  arising  from  confidence  or  good 
faith  towards  the  patentee,  knew  of  the  invention  at  the 
date  of  the  patent  ? 

PUBLIC  EXHIBITIONS. 

If  an  inventor  desires  to  exhibit  at  an  industrial  or  in- 
ternational exhibition  an  invention  which  he  has  not  yet 
patented,  but  for  which  he  intends  to  obtain  a  patent,  he 
should  proceed  under  the  39th  section  of  the  Act  of  1883, 
Eule  15  of  the  Patents  Eules,  1890,  and  the  3rd  section  of  the 
Act  of  1886.  The  39th  section  enacts  that  (a)  the  exhibition 
of  an  invention  at  an  industrial  or  international  exhibition 
certified  as  such  by  the  Board  of  Trade,  or  (b)  the  publication 
of  any  description  of  the  invention  during  the  period  of  the 
holding  of  the  exhibition,  or  (c)  the  use  of  the  invention  for 
the  purpose  of  the  exhibition  in  the  place  where  the  exhi- 
bition is  held,  or  (d)  the  use  of  the  invention  during  the 
period  of  the  holding  of  the  exhibition  by  any  person  else- 
where, without  the  privity  or  consent  of  the  inventor,  shall 
not  prejudice  the  right  of  the  inventor,  or  his  legal  personal 
representative,  to  apply  for  and  obtain  provisional  protection 
and  a  patent  in  respect  of  the  invention  or  the  validity  of 
any  patent  granted  on  the  application.  But  the  exhibitor 
must,  before  exhibiting  the  invention,  give  the  Comptroller 
the  notice  prescribed  by  Eule  15  of  his  intention  so  to  do  ; 
and  the  application  for  a  patent  must  be  made  before  or 
within  six  months  from  the  date  of  the  opening  of  the 
exhibition.  The  inventor  must  also  furnish  to  the  Comp- 


66 

tr.-ll.-r  a  l-rirf  description  of  the  invention  with  drawings  if 
necessary,  and  such  oth. -r  information  as  the  Comptroll.  r 
may  require.  The  notice  must  bear  a  stamp  of  10t .  (See 
Form  0,  po»t ,  p.  402.) 

By  the  3rd  section  of  the  amending  Act  of  1886  it  was 
enacted  that  it  should  be  lawful  for  the  Queen,  by  Or.l.  r 
in  Council,  from  time  to  time  to  declare  that  section  89 
of  the  Patents  Act  of  1888  shall  apply  to  any  exliil.it ion 
(held  out  of  the  United  Kingdom)  mention* -«1  in  the  Order 
in  like  manner  as  if  it  were  an  industrial  or  international 
exhibition  certified  by  the  Board  of  Trade,  and  to  pr« 
that  the  exhibitor  shall  be  relieved  from  the  conditions, 
specified  in  the  said  section,  of  giving  notice  to  the  Comp- 
troller of  his  intention  to  exhibit,  and  shall  be  so  relieved 
cither  absolutely  or  upon  such  terms  and  conditions  as  to 
Her  Majesty  in  Council  may  seem  fit. 


AMOUNT  OF  INVENTION  67 


CHAPTEE  V. 

AMOUNT    OF     INVENTION     REQUIEED     TO    SUPPORT    A   PATENT — 
PATENTS   FOR    '  APPLICATIONS.' 

THESE  subjects  are  closely  connected  with  that  of  Novelty, 
but  it  will  be  more  convenient  to  separate  the  cases  and 
treat  of  them  in  a  distinct  chapter.  In  contesting  the  va- 
lidity of  a  patent,  it  is  often  objected  that  there  had  been 
no  exercise  of  ingenuity  on  the  part  of  the  alleged  inventor 
in  arriving  at  his  invention,  and  that  mere  accident  or  good 
luck  is  not  entitled  to  a  patent  privilege.  Where,  however, 
the  utility  of  the  invention  is  great,  and  the  novelty  un- 
doubted, these  facts  will  come  in  aid  of  an  apparent  want  of 
ingenuity  on  the  part  of  the  inventor. 

*  If  a  patentee  would  succeed  it  is  necessary  for  him  to 
show  not  merely  newness  in  the  sense  of  doing  a  thing  which 
has  not  been  done  before,  but  he  must  show  newness  in  the 
shape  of  novelty  by  producing  a  thing  which  requires  some 
exertion  of  mind  that  could  properly  be  called  invention.' 
(Per  Mr.  Justice  Willes  in  Tatham  v.  Dania,  1  Griff.  P.  C. 
213.  And  see  what  fell  from  L.  J.  Cotton  and  the  other 
LL.JJ.  in  American  Braided  Wire  Co,  v.  Thomson, 
5  E.  P.  C.  123  ;  Britain  v.  Hirsch,  5  E.  P.  C.  232 ;  and 
Cole  v.  Saqui,  6  E.  P.  C.  41.) 

A  person  having  obtained  a  patent  for  adapting  an  iron 
plate  to  the  heel  of  a  boot  similar  to  what  had  been  pre- 
viously adapted  to  the  toe,  brought  an  action  for  an  in- 
fringement. In  the  Court  of  Appeal  L.  J.  Cotton  said  :  '  In 
my  opinion  a  thing  is  not  to  be  called  new  in  the  sense  of 
Crane  v.  Price,  simply  because  that  particular  thing  has 
never  been  seen  before.  To  be  new  in  a  patent  sense  it  is 
necessary  that  the  novelty  must  show  invention,  and  it  is 

F  2 


68  AMOUNT  OF   IMJ  NTJOX 

not  sufficient  to  be  new  in  the  patent  sense  for  the  patentee 
to  be  the  true  and  first  inventor,  if  it  is  merely  curing  th.it 
which  has  been  used  for  an  analogous  purpose  before-  the 
date  of  the  patent.'  (MiAv./  v.  l^th.un,  r,  1;.  I1.  (  .  1- 

It  is  impossible,  however,  to  lay  down  any  general  rule 
as  to  the  amount  of  ingenuity  \\hich  is  essential  to  support 
a  patent.  In  nice  cases  there  can  be  no  certainty  previous 
to  a  judicial  decision  on  the  point  wlu-thcr  any  given  patent 
is  or  is  not  impeachable  on  the  ground  of  want  of  ingenuity  ; 
which  phrase  cannot  be  regarded,  perhaps,  as  different  from 
want  of  novelty.  All  that  can  be  done  is  to  study  the  de- 
ns already  made,  and  to  be  gui<l<  d  1>\  those  cases  which 
approach  nearest  to  the  one  about  \vhk-h  doubt  may  be  f«-lt. 
Some  of  the  decisions,  indeed,  seem  to  conflict  with  others; 
and  it  will  require  a  good  deal  of  acute  discrimination  on 
the  part  of  those  who  are  called  on  to  advise  inventors,  to 
distinguish  the  line  which  separates  what  is  patentable  from 
what  is  not  patentable. 

The  question  whether  that  which  is  claimed  as  an  im- 
provement of  an  existing  machine  was  the  result  of  a  suffi- 
cient amount  of  invention  often  raises  one  of  the  most 
difficult  points  of  patent  law.  '  There  are  many  cases  in 
which  the  moment  yon  see  the  specification  or  improvement 
you  can  say  without  any  evidence  at  all,  "  This  is  a  most 
remarkable,  elaborate,  and  difficult  thing  to  do;  it  must 
have  required  great  invention,  and  there  can  be  no  dispute 
about  it,"  and  no  dispute  is  ever  raised.  On  the  other  hand, 
there  are  some  things  so  clear,  so  simple,  and  so  obvious, 
that  a  person  having  any  decent  amount  of  mechanical 
knowledge  says  at  once  it  is  so  easy  that  it  requires  no  in- 
vention at  all ;  it  is  a  mere  mechanical  equivalent,  or  that 
sort  of  thing,  that  any  ordinary  workman  can  do  without 
any  difficulty.  Then  there  are  a  great  number  of  cases 
between,  where  the  improvement  is  no  doubt  small,  but  it 
may  require  a  considerable  amount  of  invention  to  effect 
it.'  Per  Sir  G.  Jessel,  M.  R.t  in  Saxby  v.  The  Gloucester 
Waggon  Company  (Court  of  Appeal  shorthand  writer's  notes ; 
see  an  abridged  report  in  2  Griff.  P.  C.  54). 


AMOUNT  OF  INVENTION  69 

'  In  point  of  law  '  (said  L.  C.  J.  Tindal,  in  Crane  v.  Price, 
1  W.  P.  C.  411),  'the  labour  of  thought  or  experiment,  and 
the  expenditure  of  money,  are  not  the  essential  grounds  of 
consideration  on  which  the  question  whether  the  invention 
is  or  is  not  the  subject-matter  of  a  patent  ought  to  depend ; 
for  if  the  invention  be  new  and  useful  to  the  public,  it  is 
not  material  whether  it  be  the  result  of  long  experiment  and 
profound  search,  or  of  some  sudden  and  lucky  thought,  or 
mere  accidental  discovery.'  In  either  of  the  two  last  cases, 
the  practical  realisation  of  a  good  idea  will  be  considered  a 
sufficiently  meritorious  consideration  for  the  exclusive  privi- 
lege granted  to  the  inventor,  although  the  actual  amount  of 
thought  expended  in  making  the  invention  was  trifling.  The 
case  of  water-tabbies,  so  often  mentioned  in  courts  of  law, 
is  a  case  in  point.  The  invention  (according  to  Mr.  Justice 
Butter  in  Boulton  v.  Butt,  2  H.  Bl.  463,  1  Carp.  117)  first 
owed  its  rise  to  the  accident  of  a  man  spitting  on  a  floor- 
cloth, which  changed  its  colour,  whence  he  reasoned,  had 
his  patent,  and  made,  it  is  said,  a  considerable  fortune 
by  it. 

The  making  of  iron  gas-tubes  without  the  use  of  a  man- 
drel, viz.  by  welding  them  without  striking  them  on  a  solid 
surface,  '  seems  to  be  a  very  simple  invention '  (said  Lynd- 
hurst,  C.B.,  in  Russell  v.  Cowley,  I  W.  P.  C.  467)  ;  '  but  it 
has  been  productive  of  great  advantages  inasmuch  as  it  has 
enabled  the  manufacturer  to  construct  pipes  of  lengths  much 
beyond  what  could  be  done  previously  to  this  discovery.' 
Here  the  great  utility  of  the  invention  came  in  aid  of  the 
apparent  smallness  of  the  step,  and  the  patent  was  sus- 
tained. 

Lace  made  from  cotton  thread  had  the  defect  of  being 
covered  with  a  kind  of  down,  which  injured  its  appearance 
and  diminished  its  value.  A  similar  defect  was  removed 
from  muslin  by  passing  it  over  rollers  of  heated  iron,  and 
from  mitts  and  stockings  by  the  action  of  flame,  fed  by  oil 
or  alcohol.  It  occurred  to  Mr.  Hall  that  the  flame  of  gas 
might  be  employed  in  the  manufacture  of  cotton  lace  ;  and 
after  some  failures  he  succeeded  in  inventing  a  method  for 


70  AMOUNT  OF   IN VI  NTION 

removing  the  unsightly  fibres  by  the  flame  of  gas.     A  pat •  n t 
obtained  for  this  invention  was  held  good.     (//<///  •. 

i  \v.  r.  c.  100.) 

The  case  of  Ltwb  \.  />/-/*  (1  \\.  V.  (  .  188)  ia  of 
cited  to  show  that  a  small  degree  of  invention  suffices  to 
sustain  a  patent,  provided  it  be  attended  with  useful  n 
The  object  of  the  patent  was  the  shearing  of  cloth  from  list 
to  lint  by  means  of  rotatory  rutti  rs.     Now  a  rotatory  ci; 
to  shear  from  end  to  end  was  known,  and  cutting  from  list 
to  list  by  means  of  shears  was  also  known.     '  1 1»\u ,-ver  '  (said 
' '.  J.,  to  the  jury,  mi  tin-  trial  of  an  action 
for  the  infringement  of  the  patent,  in  which  the  question  of 
Ity  was  raised),  'if  before  the  plaintiffs'  patent  tin: 
cutting  from  list  to  list,  and  the  doing  that  by  means  of  ro- 
tatory cutters,  HV/V  n»t  foinhiii'il,  I  am  of  opinion  that  this 
is  such  an  invention  by  the  plaintiffs  as  will  entitle  them  to 
maintain  the  present  action.' 

In  the  case  of  llinkx  \.  ,s'<//i///  /,/<///////</  ('•-;»;»</»//  (L.  H. 
4  Ch.  D.  607),  Sir  G.  Jessel,  M.  IL,  held  that  the  substitu- 
tion of  a  flat  wick  for  a  solid  round  wick  in  a  lamp  was  a 
sufficient  ground  for  a  patent;  because,  notwithstanding 
the  apparent  smallness  of  the  invention,  it  had  the  effect  of 
largely  increasing  the  illuminating  power  of  the  lamp ;  in 
other  words,  it  was  a  very  useful  invention.  In  ghin^ 
judgment  in  the  plaintiffs  favour  the  learned  judge  made 
the  following  remark : — '  Where  a  slight  alteration  in  a 
combination  turns  that  \\liich  was  practically  useless  before 
into  that  \vhich  is  very  useful  and  very  important,  judges 
have  considered  that  though  the  invention  was  small, 
the  result  was  so  great  as  fairly  to  be  the  subject  of  a 
patent;  and  as  far  as  a  rough  test  goes,  I  know  of  no 
better.'  (See  also  Fre,n-*..n  v.  Loc,  L.  R.  9  Ch.  D.  48.) 

The  specification  under  E.  L.  Hayward's  patent  for  im- 
provements in  pavement  lights,  described  a  combination  of 
three  things,  viz.  a  frame,  a  flange,  and  a  piece  of  glass 
moulded  below  into  a  particular  form  of  prism ;  the  object 
being,  when  the  apparatus  was  inserted  in  a  floor  or  pave- 
ment, to  throw  light  coming  from  above  into  a  room  or 


AMOUNT  OF  INVENTION  71 

space  beneath,  in  a  lateral  direction.  Now  these  three 
things  taken  separately  were  old.  However,  the  Court  of 
Appeal  held,  affirming  the  decision  of  the  divisional  court, 
that  although  a  glass  prism  of  another  form  had  been  em- 
ployed in  the  decks  of  ships  for  the  purpose  of  admitting 
light  in  a  manner  resembling,  to  a  certain  extent,  the  plan 
adopted  by  Hayward,  this  was  a  novel  combination  of  old 
parts  with  a  useful  result ;  and  farther,  that  the  combina- 
tion displayed  a  sufficient  amount  of  invention  to  support 
the  patent.  The  Lords  Justices  were  of  opinion  that  Hay- 
ward  was  an  inventor,  since  he  had  found  out  something 
new,  and  had  made  a  useful  article  that  had  not  been  made 
before.  'If  it  is  not  an  invention'  (said  L.  J.  Bramwell), 
'  it  is  very  strange  that  it  has  never  been  done  before.  .  .  . 
It  is  not  the  less  an  invention  because  it  required  but  small 
inventive  powers  to  enable  the  patentee  to  do  it.'  (Hay- 
ivard  v.  Hamilton,  1.  Griff.  P.  C.  115.) 

In  Reynolds  v.  Amos  (3  E.  P.  C.  215),  V.  C.  Bacon  held 
that  the  application  of  chains  in  compressing  and  storing 
ensilage  was  a  patentable  invention ;  but  this  must  be  con- 
sidered an  extreme  case. 

In  the  case  of  The  Edison  &  Swan  Electric  Light 
Co.  v.  Woodhouse  (4  E.  P.  C.  79),  an  action  for  the  infringe- 
ment of  an  electric  lamp,  one  of  the  main  questions  in 
dispute  was  whether  Edison's  carbon  filament  had  been 
anticipated  by  the  previous  employment  by  Swan  of  a 
carbon  rod.  It  was  held  in  the  Court  of  Appeal  by  two 
judges  against  one  that  the  disuse  of  Swan's  lamp  showed 
that  it  had  not  been  successful,  whilst  Edison's  lamp  had 
been  accepted  by  the  public,  and  that  the  difference  between 
a  carbon  rod  and  a  carbon  filament  was  the  difference 
between  failure  and  success.  It  might  be  that  a  patent  for 
the  filament  alone  could  not  be  sustained,  but  when  the 
filament  was  part  of  a  combination  which  was  useful  and 
took  the  place  of  a  rod  in  a  combination  that  was  useless, 
there  was  no  reason  why  the  new  useful  combination  might 
not  be  the  subject  of  a  good  patent. 

The  preceding  cases  may  be  compared  with  a  series, 


72  AMOUNT  OF   IN  VI- MI  OH 

which  we  will  now  cite,  where  the  inventions  were  adjudged 

ifncient  t«»  supjK.rt  patents. 

l.nmton  took  out  a  patent  for  (amongst  other  thin:'-) 
an  alleged  iin|.r«)v.  in.  nt  in  anchors.  The  two  flukes  were 
made  in  one,  and  had  such  a  thickness  of  metal  in  the 
middle  that  they  might  there  !••  pierced  with  a  hole  for  the 
in-M-rtion  of  the  shank.  Previously  the  two  flukes  had  been 
joined  hy  welding  them  to  the  shank.  The  real  imp! 
ment  was  in  the  avoidance  of  welding,  and  this  was  done 
by  well-known  means.  There  was  no  proof  that  the 
anchors  made  l»y  the  new  process  were  better  than  those 
previously  made;  and  since  the  invention  seemed  to  be 
nothing  more  than  the  adoption  of  a  known  operation  prac- 
in  analogous  cases,  it  was  held  not  patentahh .  linm- 
ton v.  //<//<•/.•••*,  4  B.  &  Aid.  540.)  '  Now  '  (said  Abbott,  ( '.  /., 
in  his  judgment),  '  a  patent  for  a  machine,  each  part  of 
which  was  in  use  l>efore,  but  in  which  the  combination  of 
different  parts  is  new  and  a  new  result  is  produced,  is  good, 
because  there  is  novelty  in  the  combination.  Here  formerly 
three  pieces  were  united  together;  Brunton  only  unites 
two  ;  and  if  the  union  had  been  effected  in  a  mode  unki 
before,  as  applied  in  any  degree  to  similar  purposes,  I 
should  have  thought  it  a  good  ground  for  a  patent ;  but  I 
think  that  a  man  cannot  be  entitled  to  a  patent  for  uniting 
two  things  instead  of  three,  where  that  union  is  effected  in  a 
mode  well  known  and  long  practised  for  a  similar  purpose.' 
(Brunton  v.  Ilnirh  x,  1  Carp.  Hep.  410.) 

In  the  case  of  Kn;i  v.  Marshall  (2  W.  P.  C.  34),  it  appeared 
that  Kay  had  procured  a  patent  for  improved  machinery 
for  preparing  and  spinning  flax,  and  the  invention  was 
declared  in  the  specification  to  consist  of  new  machinery 
for  macerating  flax  previous  to  drawing  and  spinning  it ; 
and  also  for  improved  machinery  for  spinning  the  same 
after  having  been  so  prepared.  It  appeared  that  the  im- 
provement in  the  spinning  machinery  was  nothing  more 
than  the  placing  of  certain  portions  of  a  well-known 
machine  within  two  inches  and  a  half  of  each  other,  in- 
stead of  at  a  greater  distance.  It  was  shown  that  the  dis- 


AMOUNT   OF  INVENTION  73 

tances  between  the  parts  in  question  had  not  been  fixed  in 
previous  machines,  but  had  been  varied  according  to  cir- 
cumstances; and,  further,  that  the  reach  used  in  cotton 
spinning  had  actually  been  less  than  two  inches  and  a  half. 
It  was  held  by  the  Court  of  C.  P.  that  the  adoption  of  a 
particular  distance  did  not,  under  these  circumstances, 
constitute  such  an  invention  as  would  support  a  patent. 
'  Suppose,'  said  Tindal,  C.  J.,  on  delivering  judgment, 
'  suppose  a  patent  to  have  been  first  obtained  for  some 
entirely  new  method,  either  chemical  or  mechanical,  of  re- 
ducing the  fibres  of  flax  to  a  short  staple,  we  think  that  a 
second  patent  could  not  be  taken  out  for  an  improved  mode 
of  machinery  in  spinning  flax  which  consisted  of  nothing 
more  than  the  spinning  of  short  staple  of  flax  by  a  spinning 
machine  of  a  reach  of  a  given  length,  not  less  than  that 
already  in  use  for  the  spinning  of  •  cotton,  the  effect  of 
which  would  be  to  prevent  the  first  patentee  from  working 
his  invention  with  the  old  machine  at  the  proper  reach.' 
Or,  as  Lord  Cottenham  put  it  in  the  House  of  Lords,  if  the 
plaintiff  (Kay)  has  a  right  to  tell  the  rest  of  the  world  that 
they  shall  not  use  the  common  spinning  machine  with 
rollers  at  two  and  a  half  inches  distance,  then  the  existence 
of  the  patent  deprives  all  the  rest  of  the  world  of  the  right 
of  using  the  ordinary  spinning  machine  in  the  form  in 
which  they  had  a  right  to  use  it  before  the  patent  was 
granted. 

To  adjust  in  a  more  beneficial  manner  than  before  the 
distance  between  two  of  the  working  parts  in  check-action 
pianos  was  held  not  to  be  good  subject-matter  for  a  patent. 
(Herrburger  v.  Squire,  5  B.  P.  C.  581 ;  affirmed  on  app. 
6  E.  P.  C.  194.) 

In  the  case  of  Tatham  v.  Dania  (1  Griff.  P.  C.  213),  it 
was  held  by  the  judge  who  tried  the  action  that  the  use  of 
sets  of  rollers  in  a  series  going  at  different  rates  of  speed 
for  the  purpose  of  making  fibrous  or  textile  materials  pass 
through  in  a  form  more  convenient  and  advantageous  for 
being  operated  upon  by  the  succeeding  part  of  the  machine 
was  not  the  proper  subject  of  a  patent  when  it  was  shown 


~  1  AMOUNT  OF  INVENTION 

that  a  similar  contrivance  bad  been  employed  previously 
in  ( otton  spinning. 

In  Parket  v.  Stevent  (L.  R.  8  Eq.  858),  Jamti,  V.  C.t 
was  of  opinion  that  the  substitution  <>f  a  slide  for  a  hinge 
in  the  door  of  a  lamp  could  not  be  the  foundation  of  a  valid 
it.  And  in  the  same  case  (affirmed  L.  R.  5  Ch.  D.  86) 
it  was  held  that  the  application  of  a  sliding  door  to  a 
t]>li-rical  lamp  was  not  patontable,  as  it  was  proved  that 
sliding  doors  had  been  previously  fitted  to  cylin<i 
lamps. 

\\hrn  it  was  shown  that  there  existed  a  previous  patent 
for  preserving  meat  already  salted,  dried,  or  smoked,  by 
dipping  it  into  a  solution  of  bisulphide  of  lime,  it  was  In  Id 
Unit  an  invention,  the  object  of  \vhk-h  was  to  preserve  frcth 
meat  by  dipping  it  into  a  like  solution,  was  not  paten  table. 
//  v.  /;„/,,  /•/.,/,.  L.  R.  8  App.  Ca.  1079.) 

In  the  case  of  Sa.rlii  v.  The  Gloucester  Waggon  Comjxinti 
(L.  R.  7  Q.  B.  D.  805),  it  was  decided  by  the  House  of  Lords 
that  a  combination  of  an  old  locking  apparatus  with  an 
old  actuating  apparatus  for  working  railway  signals  and 
points  did  not  display  a  sufficient  amount  of  invention 
to  support  a  patent,  it  Inning  been  proved  that  the  com- 
bination was  effected  by  obvious  means  and  in  a  way  that 
did  not  call  for  more  than  ordinary  mechanical  skill.  (See 
also  Williams  v.  A>,  7  R.  P.  C.  87,  62.) 

Notwithstanding  proof  of  practical  usefulness  and  of  a 
large  sale,  it  was  held  by  the  Court  of  Appeal  that  the 
making  of  the  handles  of  bats  used  in  lawn  tennis  and  other 
games  with  two  opposite  grooves  and  with  an  enlarged  end 
was  not  good  subject-matter  for  a  patent.  (Sla;>  //</<  /  v. 
l''.-ltham,  6  R.  P.  C.  232.) 

The  discovery  that  a  particular  advantage  may  be 
obtained  by  using  a  known  machine  in  a  known  manner 
is  not  a  patentable  invention.  (Tctlcy  v.  Easton,  2  C.  B.  N.  s. 
706.) 

In  the  process  of  calendering  woven  fabrics  the  use  of 
a  roller  and  a  bowl,  and  the  means  of  regulating  the  relative 
speed  of  their  motions,  were  well  known.  In  the  process 


AMOUNT  OF  INVENTION  75 

of  calendering,  the  roller  was  smooth,  and  the  speeds  of  the 
roller  and  bowls  were  different.  In  embossing,  the  roller 
had  a  pattern  upon  it,  and  the  speeds  of  the  roller  and 
bowl  were  equal.  A  patent  was  taken  out  for  a  combina- 
tion of  a  patterned  roller  with  a  bowl  moving  at  unequal 
speeds.  The  invention  was  held  not  to  be  one  which  could 
be  the  subject  of  a  valid  patent,  as  it  amounted  to  nothing 
more  than  showing  how  to  use  an  existing  machine  more 
beneficially  than  had  been  previously  known.  Although 
the  patentee  might  have  discovered  that  by  making  the 
patterned  roller  and  the  bowl  move  at  different  speeds 
instead  of  at  the  same  speed,  and  by  moving  the  fabric 
transversely  when  fed  up,  the  machine  could  be  worked 
more  advantageously  than  formerly,  he  had  no  right  to 
prohibit  the  owner  from  using  his  property  as  he  thought 
fit.  (Ralston  v.  Smith,  9  C.  B.  N.  s.  117 ;  affirmed  by  the 
House  of  Lords,  11  H.  L.  C.  223.) 

In  the  case  of  Patterson  v.  The  Gas  Light  and  Coke 
Company  (L.  E.  2  Ch.  D.  812,  L.  E.  3  App.  Gas.  239),  a 
patentee  claimed  the  employment  of  sulphides  of  calcium 
in  separate  purifiers  as  a  means  of  purifying  coal  gas  from 
sulphur  existing  in  other  forms  than  that  of  sulphuretted 
hydrogen.  Now,  as  it  was  well  known  to  chemists,  and 
had  been  long  taught  in  books,  that  sulphides  of  calcium 
would  absorb  sulphur  compounds — moreover,  as  it  was 
plain  that  if  sulphide  of  calcium  was  to  be  used,  a  separate 
holder  must  be  employed,  and  as  no  special  apparatus  was 
suggested,  it  was  held  that  there  was  no  invention  that 
would  support  a  patent.  The  same  patentee  also  claimed 
a  method  or  system  of  employing  lime  purifiers  in  succes- 
sion, whereby  the  contents  of  all  the  purifiers,  or  any  re- 
quired number  of  them,  could  be  converted  into  sulphides 
of  calcium,  and  also,  if  required,  be  maintained  in  that 
condition.  Now,  lime  purifiers  in  succession  had  been  in 
general  use  for  a  long  time,  and  the  patentee  had  not  de- 
vised either  a  new  process  or  any  new  apparatus.  What 
he  really  thought  he  had  discovered  was  that  if  the  carbonic 
acid,  which  is  the  first  thing  taken  up  by  the  lime,  was 


76  PATENTS  FOR  'APPLICATIONS' 

allowed  to  enter  the  last  purifier*,  it  would  have  a  dele- 
on  the  purifying  process.  It  ought,  therefore, 
to  be  removed  at  the  beginning  of  the  operation.  liut  thi.-, 
though  it  might  be  a  very  useful  piece  of  advice,  and  an  in- 
.-t  ruction  of  great  value,  was  held  l>y  the  Court  of  Appeal 
not  to  constitute  of  itself  the  subject-matter  of  a  patent. 
A  specification  claim.  .1  the  use'of  solid  naphthaline  ] 
'1  in  the  form  of  sticks,  rods,  or  pellets,  for  the  enrich  - 
nu-nt  of  illuminating  gas.  Now  as  liquid  naphthaline  had 
been  previously  applied  for  » •nriehinjj  illuminating  gas,  and 
as  solid  naphthaline  in  tin-  granular  form  and  in  tin-  form 
of  sticks  was  a  known  article,  it  was  held  that  this  applica- 
tion of  a  known  article  to  a  purpose  for  which  the  same 
article  in  another  form  had  been  pn -vi.»u>ly  applied  was  not 
proper  subject-matter  for  a  patent.  (Ml»>-<  /.«//</ 

.  A'/.///,  4  R.  P.  C.  585.) 

The  following  have  been  judicially  held  not  to  be  pa- 
t« -n table  inventions:  The  use  of  steel  hoops  in  a  petticoat 
instead  of  whalebone  hoops  (Thompson  v.  James,  32  Bea. 
570);  the  use  of  hollow  iron  columns  filled  with  water  in 
the  construction  of  buildings  and  for  the  support  of  fire- 
proof floors  (Tirh-i-lju-nnii  v.  Arnuj  ami  .Y</ry  Co-oper 
Society,  5  R.  P.  C.  405) ;  the  substitution  of  a  hinge  or  piv<  >t 
for  a  slide  in  certain  cooking  apparatus  (/•'/./<•//<  r  \.  Ai>i>  //. 
5  R.  P.  C.  46) ;  the  substitution  of  a  pivot  for  a  hinge  in 
a  nail-making  machine  (I'mt,,!  ll»r*e»1ioc  d  Xail  Co.  V. 
Swedish  Horse  Nail  Co.,  6  R.  P.  C.  I).1 

PATENTS    FOB    'APPLICATIONS.' 

These  are  patents  for  inventions  which  have  reference 
to  the  application  of  an  existing  article  to  a  purpose  for 
which  other  similar  articles  have  been  previously  used  ;  or 

1  Other  cases  in  which  the  inventions  were  held  to  be  insufficient  to 
support  patents  were  Whitt  v.  Toms  (32  L.  J.  Ch.  204) ;  Jackson  v.  Needle 
P.  C.  191) ;  Sharp  v.  Braver  (3  R.  P.  C.  193) ;  Guilbcrt-Martin  v. 
AY rr  (4  R.  P.  C.  18) ;  Britain  v.  Hirsch  (2  R.  P.  C.  74) ;  S.  C.  on  app.  226  ; 
Walker  v.  Longford  Wire  Co.  (4  R.  P.  C.  281) ;  Roiccliffe  v.  Longford  Wire  Co. 
(4  R.  P.  C.  287) ;  Haslam  Co.  v.  Hall  (5  R.  P.  C.  21) ;  Longbottom  v.  Shaw 
(5  R.  P.  C.  497  ;  affirmed  on  appeal,  6  R.  P.  C.  143) ;  Gaulard  and  Gibb's 
Patent  (5  R.  P.  C.  525) ;  Herrburgcr  v.  Squire,  on  appeal  (6  R.  P.  C.  194) ; 
Windover  v.  Morgan  (7  R.  P.  C.  130). 


PATENTS  FOE  'APPLICATIONS'  77 

to  the  application  of  a  well-known  process  to  produce  a  well- 
known  article ;  or  to  the  application  of  a  well-known  pro- 
cess to  effect  a  result  in  a  well-known  article  after  the  same 
process  has  been  publicly  applied  to  an  analogous  article. 
When  there  is  nothing  new  in  the  machinery  or  methods 
employed,  patents  for  such  applications  are  not  favoured 
by  the  law,  which  looks  upon  the  inventions  as  wanting  in 
ingenuity  or  novelty.  The  rule  is  well  established  that  the 
mere  application  of  an  old  mechanical  contrivance  to  an 
analogous  purpose  is  not  an  invention  for  which  a  patent 
can  be  granted.  '  In  all  the  cases  in  which  a  patent  has 
been  supported'  (said  Lord  Campbell  in  Brook  v.  Aston,  8E. 
&  B.  478)  '  there  has  been  some  discovery,  some  invention. 
It  has  not  been  merely  the  application  of  the  old  machinery 
in  the  old  manner  to  an  analogous  substance.  That  cannot 
be  the  subject  of  a  patent.' 

In  Harwood  v.  Great  Northern  Railway  Company  (2  B. 
&  S.  208),  Sir  A.  Cockburn,  C.  J.,  said  :  '  Although  the  au- 
thorities establish  the  proposition  that  the  same  means, 
apparatus,  or  mechanical  contrivance  cannot  be  applied  to 
the  same  purpose,  or  to  purposes  so  nearly  cognate  and 
similar  as  that  the  application  of  it  in  the  one  case  naturally 
leads  to  the  application  of  it  when  required  in  some  other, 
still  the  question  in  every  case  is  one  of  degree,  whether 
the  amount  of  affinity  or  similarity  which  exists  between 
the  two  purposes  is  such  as  that  they  are  substantially  the 
same  ;  and  that  determines  whether  the  invention  is  suffi- 
ciently meritorious  to  be  deserving  of  a  patent.' 

'  If  the  use  or  application  is  merely  analogous '  (said  Mr. 
Justice  Chitty  in  Lister  v.  Norton,  3  E.  P.  C.  205)  'it  is  plain 
that  the  patent  cannot  be  granted.  When  it  is  not  only 
analogous,  but  is  sufficiently  out  of  the  beaten  track,  the 
patent  may  be  upheld.  These  general  propositions  are  not 
precise  or  scientific.  It  is  impracticable  to  frame  proposi- 
tions of  a  scientific  character  on  this  point.  Every  case 
must  be  decided  on  its  peculiar  merits  and  with  reference 
to  its  own  special  circumstances.  The  authorities  are  ne- 
cessarily decisions  on  particular  cases,  and  are  useful  only 


78  PATEXTS  FOB  'APPLICATIONS' 

as  affording  some  guide  to  the  decision  of  the  case  before 
theCour 

The  following  eases  will  illu-tratr  the  law  as  thus  laid 
down  by  these  learned  judges : — 

The  casting  of  tubular   boilers  in  one  piece,  similar 
boilers  having  been  previously  made  in  several  pieces  which 
were  afterwards  fastened  together  i>y  means  of  cement,  was 
held  not  to  be  an  invention  for  which  a  valid  pat- 
be  obtained,  although  the  result  was  useful  and  beneficial 
public.     It  was  only  the  application  of  a  well-known 
article,  vi/.  iron,  by  a  well-known  process,  viz.  casting,  to 
production   of  a  well-known   article,  tubular   boilers. 
'•i/V,-,  18  C.  B.  N.  s.  8:r          .  in  error,  1 1  • 

Again,  the  application  of  ngle  iron  (a  well-known 

article  of  commerce  already  applied  to  a  variety  of  purposes) 
to  the  construction  of  hydraulic  joints  of  telescopic  gas- 
holders, instead  of  making  them  of  two  pieces  of  */ 
an^le  iron  attached  to  a  plate,  was  held  not  to  be  patent - 
able,  (llorton  v.  Malon,  12  C.  B.  N.  s.  487 ;  S.  C.  in  error, 
16  C.  B.  N.  s.  141.) 

'  The  use  of  a  new  material  to  produce  a  known  article 
is  not  the  subject  of  a  patent,'  said  ]'.('.  Mulinx,  in  /. 

L.  R.  10  Eq.  522),  a  case  where  a  man  had 
taken  out  a  patent  for  the  use  of  a  kind  of  wool  called 
Russian  tops  in  the  manufacture  of  artificial  hair.  (See 
also  Thompson  v.  Jainrx,  82  Beav.  570.) 

In  the  case  of  Lo*/i  v.  //  /  /  (1  W.  P.  C.  202),  the 
question  was  reduced  to  this — Is  a  man  who  finds  a  par- 
ticular construction  of  wheel  already  in  use  for  carriages  on 
ordinary  roads  entitled  to  a  patent  for  applying  it  to  rail- 
way carriages,  such  application  not  having  been  previously 
made?  Lord  AUnncr  remarked  that  you  cannot  have  a 
patent  for  applying  a  well-known  thing,  capable  of  being 
applied  to  fifty  thousand  different  purposes,  to  an  operation 
which  is  exactly  analogous  to  what  was  done  before.  His 
lordship  put  this  case :  '  Suppose  a  man  invents  a  pair  of 
scissors  to  cut  cloth  with ;  if  the  scissors  were  never  in- 


PATENTS  FOR  'APPLICATIONS'  79 

vented  before,  he  could  take  out  a  patent  for  it.  If  another 
man  found  he  could  cut  silk  with  them,  why  should  he  take 
out  a  patent  for  that  ? '  Again — '  It  would  be  a  very  ex- 
traordinary thing  to  say,  that  after  all  mankind  have  been 
accustomed  to  eat  soup  with  a  spoon,  that  a  man  could 
take  out  a  patent  because  he  says  you  might  eat  peas  with 
a  spoon.' 

In  an  action  for  an  alleged  infringement  of  a  patent  for 
improvements  in  separating  the  fibres  of  cocoa-nut  husks, 
it  was  shown  that  the  principal  part  of  the  invention  con- 
sisted in  passing  the  split  husks  between  crushing  rollers, 
and  that,  for  some  time  previous  to  the  date  of  the  patent, 
similar  rollers  had  been  employed  in  treating  hemp.  Lord 
Campbell,  who  presided  at  the  trial,  told  the  jury  that  the 
use  of  the  crushing  rollers  having  been  thus  anticipated,  no 
claim  for  their  application  to  the  crushing  of  cocoa-nut 
husks  would  hold  good.  (Hyde  v.  Trent,  Newton's  Lond. 
Jour.  vol.  45,  p.  135.  See  also  Tatham  v.  Dania,  1  Griff. 
P.  C.  213.) 

So,  in  the  case  of  Eegina  v.  Cutler  (Macrory's  Pat.  Ca. 
124-138),  it  was  held  by  two  judges  on  different  occasions, 
that  the  mere  application  of  a  known  article  to  a  new  use, 
the  mode  of  application  having  been  previously  employed 
in  applying  analogous  articles  to  the  same  purpose,  cannot 
be  made  the  subject  of  a  patent.  In  this  case  the  patent 
was  for  improvements  in  the  construction  of  the  tubular 
flues  of  steam  boilers.  The  specification  claimed  the  appli- 
cation of  iron  tubes  coated  with  copper  or  brass  to  this 
purpose.  This  kind  of  tube  was  not  new ;  nor  was  there 
any  novelty  in  the  way  the  patentee  applied  the  tubes  in 
the  construction  of  flues,  uncovered  tubes  having  been  pre- 
viously used  in  a  similar  way. 

In  The  Patent  Bottle  Envelope  Co.  v.  Seymer  (5  C.  B. 
N.  s.  164)  it  was  held  that  the  use  of  a  model  or  mandrel  in 
the  form  of  a  bottle  in  making  envelopes  for  bottles  out  of 
rushes  or  straw  could  not  be  the  subject  of  a  patent,  this 
being  merely  the  application  of  a  well-known  tool  to  work 
previously  untried  materials  or  to  produce  new  forms. 


80  PATENTS  POR  'APPLICATIONS' 

On  the  trial  of  Btuh  v.  Fox  (Macr.  P.  C.  168),  i 
peared  that  tin-  invention.  f<>r  an  infringement  of  which  tin- 
action  was  brought,  consisted  in  th«-  use  of  a  caisson  or 
hollow  cylinder  for  building  under  water.    It  was  proved  at 
tlu-  trial  that  a  similar  caisson  for  building  on  land  had 
been  described  in  the  specification  of  a  patent  granted 
several  years  previously.     Thin,  therefore,  was  only  a  new 
apj'lit -ation  of  a  machine  previously  applied   to   an 
purpose.   'I  think'  (said  >//•  7.  /  '  .  /.'..  to  ti  .   jury) 

'that  a  man  cannot,  if  he  has  applied  an  old  invention,  or 
part  of  an  old  invention,  to  a  new  purpose,  obtain  a  pat'  nt 
for  such  an  invention.  Both  the  plaintiff  and  the  other 
witness  say  that  the  invention  consists  in  the  application, 
and  not  in  the  novelty  of  the  thing  itself — in  other  words, 
that  the  only  novelty  is  in  the  application  of  the  apparatus. 
I  think  that  a  patent  cannot  be  taken  out  for  such  an 
application.  If  a  man  were  to  take  out  a  patent  for  a 
telescope  to  be  used  to  make  observations  on  land,  I  do 
not  think  any  one  could  say,  "  I  will  take  out  another 
patent  for  that  telescope  to  be  used  for  making  observa- 
tions on  the  sea."  On  appeal  to  the  House  of  Lords 
(Macr.  P.  C.  179),  the  judge's  direction  was  held  to  be 
right. 

In  /.'/-A  v.  Aston  (8  E.  &  B.  478),  it  appeared  that  the 
plaintiff  had  obtained  a  patent  in  1856  for  improvements  in 
finishing  yarns  of  wool  and  hair ;  and  that  in  1853  he  had 
taken  out  a  patent  for  a  process  precisely  similar  except 
that  it  was  applicable  to  the  finishing  of  cotton  and  linen 
yarns.  The  patent  of  later  date  was  held  bad  because  the 
alleged  invention  was  only  the  application  of  an  old  machine 
in  an  analogous  manner  to  another  but  similar  object.  This 
decision  was  affirmed  by  the  Court  of  Exchequer  Chamber 
(5  Jur.  N.  s.  1025). 

In  the  case  of  Ilaru-ood  v.  lite  Great  Northern  Railway 
Company  (2  B.  &  S.  194  ;  11  H.  L.  C.  654),  a  patent  for  the 
application  of  'fishes'  to  iron  rails  for  railways,  for  the 
purpose  of  securing  them,  was  held  invalid,  because  a  similar 
contrivance  had  been  employed  to  fasten  pieces  of  timber 


PATENTS  TOE  '  APPLICATIONS  '  81 

together  in  the  construction  of  bridges,  and  had  also  been 
used  in  various  articles  of  machinery.  Mr.  Justice  Willes 
said  the  invention  for  which  the  patent  had  been  obtained 
was  '  the  mere  application  of  an  old  contrivance  in  the  old 
way  to  an  analogous  subject  without  novelty  or  invention 
in  the  mode  of  applying  such  old  contrivance  to  the  new 
purpose.' 

Jordan's  specification  claimed  the  construction  of  ships 
with  an  iron  frame  combined  with  an  external  covering  of 
timber  planking  for  the  sides,  bilges,  and  bottoms.  It 
appeared  that  a  combination  of  wood  and  iron  in  the  con- 
struction of  ships  was  well  known  previous  to  the  patent, 
and  that  frames  partly  of  iron  and  partly  of  wood  had  been 
coated  with  iron.  The  Court  decided  that  as  iron  and 
wood  had  both  been  long  used  in  the  construction  of  vessels, 
the  application  of  wrooden  planking  to  the  iron  frame  of  a 
vessel,  without  any  peculiarity  in  the  nature  of  that  plank- 
ing, could  not  be  the  subject-matter  of  a  patent.  The 
alleged  invention  was  as  to  one  part  nothing  more  than  the 
substitution  of  one  well-known  and  analogous  material  for 
another — that  is,  wood  for  iron — to  effect  the  same  purpose 
on  an  iron  vessel ;  and  as  to  another  part,  it  W7as  the  appli- 
cation of  the  same  old  invention,  viz.  planking  with  timber, 
which  had  been  formerly  done  on  a  wooden  frame,  for  an 
analogous  purpose  on  an  iron  frame.  (Jordan  v.  Moore, 
L.  E.  1  C.  P.  624.) 

If  an  old  combination  used  in  one  kind  of  machine  is 
applied  to  another  but  cognate  kind  of  machine  in  which  it 
had  not  been  previously  found,  this  application  will  not  be 
considered  novel  for  the  purpose  of  supporting  a  patent 
unless  some  ingenuity  or  invention  is  displayed  in  the 
application.  A  patented  improvement  in  a  combined  mowing 
and  reaping  machine  consisted  of  a  contrivance  by  which 
the  cutting  knife  could  be  made  to  revolve  more  rapidly 
when  cutting  grass  than  when  cutting  corn.  It  was  shown 
at  the  trial  of  an  action  for  an  infringement  that  a  similar 
contrivance  had  been  previously  applied  to  a  hay-making 
machine  with  the  view  of  driving  the  tossing  rakes  quickly 


82  KST8  FOB  '  APPLICATIONS' 

or  slowly  at  the  will  of  the  operator.  The  patent  was  there* 
fore  held  to  be  invalid.     (/  1  <  iriflin.  P.  C. 

40.)     And  BO,  the  use  of  a  guide  in  a  frilling  machine  for 
the  purpose  of  keeping  down  the  work  was  held  1 
Jettcl,  M.  A'.,  in  //<//  r.  2  M-ril  15,1881, 

p.  274),  not  to  be  a  patentuM-    invention,  because  'that 
was  the  use  of  known  means  for  an  analogous  purpose/ 
guides  of  similar  character  having  been  employed  in  many 
!•  machines. 

A  patent  was  obtained  for  supporting  the  front  of  a 
carriage  by  C  springs.     In  an  action  for  infringenui 
was  held  by  the  House  of  Lords,  reversing  the  decisions  of 
the  Courts  below,  that  this  was  only  the  application  of  a 
known  article  to  an  analogous  purpose,  since  similar  springs 
(for  they  were  not,  strictly  speaking,  C  springs)  had  been 
previously  used  at  the  back  of  a  carriage,  and  in  th<  ir 
application  to  the  front  there  was  no  invention.    (If/// ' 
v.  Morgan,  7  R.  P.  C.  130.) 

Compare  the  preceding  cases  with  l'>-iui  v.  Ifibby  (L.  R. 
2  Ch.  127).     Mr.  John  Penn  obtained  a  patent  for  an  im- 
provement in  bearings  and  bushes  for  the  shafts  of  s< 
propellers,  which  consisted  in  grooving  the  inner  surfaces 
of  the  bearings  of  the  shaft,  and  placing  in  the  grooves 
strips  of  wood,  which  projected  beyond  the  inner  surface  of 
the  metal  bearings,  so  as  to  support  the  rubbing  action  of 
the  shaft  whilst  water  was  allowed  to  circulate  freely  in  the 
intermediate  channels.    The  metal  bearings  previously  em- 
ployed had  been  found  unable  to  withstand  for  any  length 
of  time  the  friction  of  the  screw-shaft,  and  it  almost  seemed 
as  if  the  screw-propeller  would  have  to  be  abandoned ;  but 
Mr.  Penn's  simple  contrivance  got  over  the  difficulty,  and 
the  invention  came  into  general  use.    It  was  contended  that 
the  alleged  invention  was  merely  a  new  application  of  an 
old  and  well-known  thing,  viz.  wood,  and  the  wooden  bear- 
ings of  grindstones  and  waterwhcels  were  adduced  as  show- 
ing that  the  invention  was  not  novel.     '  In  every  case  of 
this  description'  (said  Lord  Chdm»ford}t  'one  main  con- 
sideration seems  to  be  whether  the  new  application  lies  so 


PATENTS  FOE  'APPLICATIONS'  83 

much  out  of  the  track  of  the  former  use  as  not  naturally 
to  suggest  itself  to  a  person  turning  his  mind  to  the  subject, 
but  to  require  some  application  of  thought  and  study. 
Now,  strictly  applying  this  test  to  the  present  case,  it 
appears  to  me  impossible  to  say  that  the  patentee's  in- 
vention is  merely  the  application  of  an  old  thing  to  a  new 
purpose.  The  only  examples  of  old  use  .  .  .  are  of  a  totally 
different  character,  and  for  a  totally  different  object.  It  is 
difficult  to  believe  that  bearings  of  this  description  could 
ever  have  suggested  the  application  of  wood  to  the  bearings 
of  screw-propellers  in  the  way  described  in  the  patent.' 

A  patent  was  obtained  for  improvements  in  the  manu- 
facture of  glass.  The  invention  consisted  of  a  mode  of 
forming  the  sides  of  the  chambers,  where  the  materials 
were  fused,  in  such  a  manner  that  a  current  of  cool  air 
might  circulate  and  so  prevent  over-heating.  Although  the 
principle  was  previously  known,  yet,  as  the  contrivance 
when  applied  to  the  manufacture  of  glass  rendered  the 
process  of  melting  less  costly  and  less  dangerous,  the  patent 
was  held  good.  (Canningtonv.  Nuttall,  L.  E.  5  H.  L.  205.) 

The  existence  of  a  patent  for  a  certain  application  of  a 
given  thing  (which  thing  is  not  new)  will  not  vitiate  a  sub- 
sequent patent  for  another  application  of  the  same  thing, 
provided  that  the  two  applications  are  perfectly  distinct, 
and  that  the  second  application  is  not  in  any  way  com- 
prised in  the  specification  under  the  first  patent.  Vaucher 
took  out  a  patent  for  an  improvement  in  packing  hydraulic 
and  other  machines  by  means  of  a  lining  of  soft  metal, 
whereby  certain  parts  of  the  machines  were  rendered  air- 
tight and  water-tight.  It  was  subsequently  discovered  by 
Newton  that  the  same  material,  soft  metal,  could  be  use- 
fully employed  in  diminishing  the  friction  of  machinery  in 
rapid  motion,  and  in  preventing  the  generation  of  heat,  by 
applying  it  to  the  surfaces  in  contact.  It  was  held,  in  an 
action  for  an  infringement  of  Newton's  patent,  that  the 
two  applications  of  soft  metal  were  essentially  different,  and 
Newton's  invention  was  not  wanting  in  novelty.  (Newton  v. 
Vaucher,  6  Exch.  Rep.  859.) 

G   2 


si  PATENTS  FOR  'APPLICATIONS' 


Cli.-nii«il    Inr.ntivn*.      Tin-    Same    dktinrti«»n,  \\lii.-lj,   it 

has  been  seen,  is  made  between  mechanical  appli<  ations 
brought  about  by  an  obvious  exercise   of  tin-  m\,  : 
faculty  and  those  where  it  is  scari.lv  appn  <  -iaMe,  holds  good 
with  regard  to  tlu-  applications  of  the  chemi<  ;il  \-v«\»  i  tics  of 
matter.    Thus,  in  ('a'  1'ract.  Mech.  Joui 

vol.  ii.  2nd  ser.  U7»,  it   \vas  laid   that  the  application  of 
caustic  alkalies  for  the  purpose  of  dissolving  tin-   ^lut«  n 
contained   in   tlour  employed  in  the  manufacture  of 
could  not  be  th»-  subject  of  a  i>at»  -nt.  inasmuch  as  ca 
alkalies  had  been  previously  used  for  the  purpose  of  dis- 
solving gluten  in    the   manufacture  of  .s/.  //•«•/*.     See  also 
tin-    observations    of    Lord    llntln-rlnj   and    /."/•'/    /- 
burn  in  /  i'frton  (L.  K.  3  App.  Cas.  1055,  1073, 

1079). 

This  case,  in  which  the  amount  of  invention  was  ad- 

judged too  small  to  support  the  patent,  should  be  compared 

with  that  of  Y<«tn<j  v.  I-\rni>>  (4  Giff.  597,  612),  a  suit  for 

an  injunction  to  restrain  the  infringement  of  a  patent  for 

obtaining  paraffine  oil  by  the  distillation  of  bituminous 

coal*,  wherein  it  was  proved  that  previously  to  the  plaintiff's 

invention  paraffine  oil  had  been  extracted  from  bituminous 

*/!«/»•  by  distillation.     It  was  argued  for  the  defendants,  on 

the  authority  of  Regina  v.  Cuth-r,  Brook  v.  Anton,  and  such 

cases,  that  bituminous  shale  being  a  substance  analogous 

to  bituminous  coal,  the  invention  of  the  plaintiff  was  not 

in  law  the  subject  of  a  patent.    But  I".  ('.  Stuart  said  that 

there  seemed  to  be  no  analogy  behvt  ••  -n  the  cases  cited  and 

the  present  one.     And  in  giving  judgment  in  favour  of  the 

validity  of  the  patent,  his  Honour  observed,  '  Inventions  in 

mechanics  are  as  widely  different  from  inventions  in  eco- 

nomical chemistry  as  the  laws  and  operations  of  mechanical 

forces  differ  from  the  laws  of  chemical  affinities,  and  the 

results  of  analysis  and  experiment  in  the  comparatively 

infant  science  of  chemistry,  with  its  boundless  field  of  un- 

discovered laws  and  undiscovered  substances.     This  obser- 

vation, as  applied  to  reported  cases,  will  strike  the  mind  of 

every  lawyer  who  has  even  a  slight  elementary  knowledge 


PATENTS  FOB  '  APPLICATIONS '  85 

of  both  sciences.'     (See  also  the  case  of  Muntz  v.  Foster, 
ante.} 

In  Hills  v.  London  Gas  Light  Company  (5  H.  &  N.  369), 
an  action  upon  a  patent  for  the  purification  of  coal  gas  by 
the  use  of  hydrated  oxides  of  iron,  it  was  argued  that,  as 
the  property  which  these  oxides  possess  of  combining  with 
sulphuretted  hydrogen,  the  deleterious  part  of  unpurified 
coal  gas,  was  a  perfectly  well-known  property,  the  mere 
application  of  the  oxides  to  remove  sulphuretted  hydrogen 
from  gas  could  not  be  the  subject  of  a  patent.  The  Court 
of  Exchequer  held  that  if  a  man  were  simply  to  say  that  he 
claimed  the  use  of  hydrated  oxides  of  iron  for  the  purifi- 
cation of  gas,  without  saying  how  they  were  to  be  applied, 
the  objection  might  possibly  be  well  founded ;  but  as  the 
patentee  had  shown  how  the  oxides  were  to  be  used,  the 
objection  failed.  (Comp.  Ormson  v.  Clarke,  13  C.  B.  N.  s. 
337 ;  in  error,  14  C.  B.  N.  s.  475.) 

Patents  for  Improvements  on  Inventions  the  Subject  of 
Existing  Patents. — Inventors  after  obtaining  a  patent  fre- 
quently discover  that  their  invention  is  capable  of  consider- 
able improvement,  and  they  think  it  desirable  to  take  out 
a  second  patent  for  the  improvements. 

In  Lister  v.  Leather  (8  E.  &B.  1004),  it  was  held  that  a 
second  patent  for  an  improvement  on  an  invention  which 
is  the  subject  of  a  previous  patent  afterwards  assigned  to 
the  second  patentee  is  not  void  as  being  contrary  to  public 
policy.  And  the  same  rule  holds  good  in  regard  to  a  second 
patent  obtained  by  the  same  inventor. 

A  patented  invention  which  was  afterwards  greatly  im- 
proved by  a  second  patent  obtained  by  the  same  inventor 
is  not  on  that  account  thrown  open  to  the  world.  (Thom- 
son v.  Batty,  6  E.  P.  C.  100.)  Nor  is  a  patent  defeated 
because  later  inventions  improved  the  articles  produced, 
and  they  ceased  to  be  made  in  accordance  with  the  direc- 
tions of  the  specification.  (Edison  &  Sivan  Co.  v.  Holland, 
6  R.  P.  C.  243.) 


86  WHO  MAT  BE  A  PATENTEE 


CHAPTER   VI. 

WHO   MAY   BE   A   PATENTEE. 

BY  the  fourth  section  of  the  Patents  Act  of  1883,  any  person, 
whether  a  British  subject  or  not,  is  empowered  to  make 
application  for  a  patent.  Two  or  more  persons  may  make 
a  joint  application,  and  a  patent  may  be  granted  to  them 
jointly.  ]>y  th«-  fifth  section  of  that  Act,  an  applies 
must  contain  a  declaration  to  the  effect  that  the  applicant 
is  in  possession  of  nn  invention,  whereof  he,  or  in  the  case 
of  a  joint  application,  one  or  more  of  the  applicants,  claims 
or  claim  to  be  the  true  and  first  inventor  or  inventors. 

No  application  will  be  entertained  at  the  Patent  Office 
unless  the  person  or  persons  claiming  to  be  the  true  and 
first  inventor  or  inventors  are  applicants  (3/ara/ia//'x  .  (;>;>//- 
~»  R.  P.  C.  661),  but  other  persons  who  are  non- 
invt  ntors  may  join  in  the  application,  and  in  that  case  the 
patent  will  be  issued  to  all  the  applicants,  who  will  be  joint 
patentees.  (Patents  Act,  1885,  s.  5.)  Although  there  is  no 
form  enabling  an  inventor  and  an  incorporated  company 
to  apply  jointly  for  a  patent,  this  may  be  done,  since  by 
sect.  117  of  the  Act  of  1888  *  person'  includes  a  body 
corporate. 

For  a  long  series  of  years  the  strict  letter  of  the  statute 
of  James  has  been  so  far  relaxed  as  to  allow  persons  simply 
importing  an  invention  from  a  foreign  country  into  this 
realm  to  obtain  a  patent  in  respect  of  it,  provided  that  such 
an  invention  is  new  and  useful,  the  administrators  of  the 
law  always  reading  the  word  '  inventor,'  in  the  statute,  as 
embracing  an  importer.  '  I  must  look  on  it  (said  Jewel, 
M.  It.)  as  a  sort  of  anomalous  decision,  not  depending  on  any 
principle  whatever,  which  has  acquired  by  time  and  recog- 
nition the  force  of  law.'  The  first  decision  on  this  point 


WHO  MAY  BE  A  PATENTEE  87 

since  the  Statute  of  Monopolies,  was  in  the  case  of  Edgebery 
v.  Stevens,  to  be  found  in  the  second  volume  of  '  Salkeld's 
Reports,'  p.  477 :  '  If  the  invention  be  new  in  England  a 
patent  may  be  granted,  though  the  thing  was  practised 
beyond  sea  before  ;  for  the  statute  speaks  of  new  manufac- 
tures within  this  realm ;  so  that  if  it  be  new  here,  it  is 
within  the  statute ;  for  the  Act  intended  to  encourage  new 
devices  useful  to  the  kingdom,  and  whether  learned  by  travel 
or  by  study,  it  is  the  same  thing.' 

In  Carpenter  v.  Smith  (I  "WY  P.  C.  535),  Lord  Abinger 
said,  '  A  man  has  a  right  to  a  patent  not  only  for  his  own 
original  invention,  but  he  has  a  right  to  a  patent  if  he  is 
the  first  person  who  brings  into  England  an  invention  which 
is  used  abroad  and  not  known  in  England.' 

Previous  to  the  Act  of  1883  it  had  been  decided  (Chap- 
pell  v.  Purday,  14  M.  &  W.  318)  that  an  alien  might  be  the 
grantee  of  a  patent ;  and  In  re  Wirth's  Patent  (L.  R.  12 
Ch.  D.  303),  that  a  patent  might  be  granted  to  an  alien 
resident  abroad  for  an  invention  communicated  to  him  by 
another  alien  also  resident  abroad,  but  Form  A  of  the  Patents 
Rules,  1890,  renders  it  necessary  that  the  applicant  for  a  com- 
munication patent  must  be  resident  in  the  United  Kingdom 
(see  p.  395).  In  Beard  v.Egerton  (3  C.  B.  Rep.  97),  it  was 
held  that  the  grant  might  be  taken  either  in  the  alien's 
name  or  in  the  name  of  a  British  subject  in  trust  for  him. 

It  has  long  been  a  common  practice,  which  the  new  Act 
has  not  abrogated,  to  grant  patents  to  British  subjects  resi- 
dent in  Great  Britain  in  respect  of  inventions  communicated 
from  abroad.  If  the  grantee  is  the  agent  of  the  foreign  in- 
ventor, the  letters  patent  are  subsequently  assigned  to  the 
latter  or  his  nominee.  But  in  these  cases  it  is  necessary 
for  the  applicant  to  state  in  his  application  that  the  subject- 
matter  wfts  communicated  to  him  from  abroad.  (Milligan 
v.  Marsh,  2  Jur.  N.  s.  1083.)  (See  the  form  of  application 
A  1  in  the  second  schedule  of  the  Patents  Rules,  1890.) 

By  the  International  Convention  and  section  103  of  the 
Patents  Act  of  1883  a  foreign  patentee  has  an  absolute  right 
of  priority  for  his  invention  for  a  period  of  seven  months  from 


88  WHO  MAY  BE  A 

tin  date  of  his  foreign  application,  notwithstanding  any 
intermediate  publication  or  use  of  tl.«  in\<  ntion  in  tiiis 
country.  A  I'.i  iti-h  patent  und«  r  tin  Convention  will  only 
be  granted  to  the  person  who  made  the  foreign  application. 
It  will  not  be  granted  to  an  agent.  (Shall'  /</»  /-.</•  r'x  .1 

ft,   o   I!.    1'.   C.   550;    Care:*    Aj  R.  P.  C. 

552.) 

A  I'.ritMi  Hil'ject  has  i  i  to  obtain  a 

patent  for  nn  invention  derived  from  another  British  subject 
residing  in  the  l'nit«l  Kingdom,  and  it  seems  doubtful 
whether  a  valid  patent  could  U  obtained  in  respect  of  an 
invention  communicated  by  an  alien  permanently  domiciled 

Ejection  can  be  tak»-n  to  a  patent  on  the  ground 
that  one  of  the  grantees  is  an  infant,     (f //«/////  \.  II , 
L.  R.  5  Ch.  D.  858.)    And  there  can  be  no  doubt  that  female 
inventors,  whether  married  or  single,  are  entitled   to  the 
grant  of  a  patent. 

In  consequence  of  the  derision  of  the  Court  in  .1/ar* 
•'•HI'-  Str.  L.  R.  3  Ex.  D.  208),  a  clause 

(sect.  34)  was  introduced  into  the  Patents  Act  of  1883, 
la  \\hirh  it  was  provided  that  if  a  person  possessed  of  an 
in vi  ntion  dies  without  making  application  for  a  patent  for 
the  invention,  application  may  be  made  by,  and  a  patent  for 
the  invention  granted  to,  his  legal  representative ;  but  < 
such  application  must  be  made  within  six  months  of  the 
decease  of  such  person,  and  must  contain  a  declaration  l.y 
the  legal  representative  that  he  believes  such  person  to  be 
or  to  have  been  the  true  and  first  inventor  of  the  invention. 

By  the  twelfth  section  of  the  same  Act  (sub-section  3  b) 
it  is  enacted  that  if  the  applicant  for  a  patent  dies  before 
the  expiration  of  fifteen  months  from  the  date  of  application 
(and  before  the  patent  shall  have  been  sealed),  the  pat.  n: 
may  be  granted  to  his  legal  representative,  and  sealed  at 
any  tune  within  twelve  months  after  the  applicant's  death. 

The  word  '  patentee  '  as  used  in  the  Patents  Acts  signi- 
fies '  the  person  for  the  time  being  entitled  to  the  benefit  of 
the  patent '  (s.  46  of  the  Act  of  1883). 


THE  TITLE  89 


CHAPTER  VII. 

PROCEDURE    ON    APPLYING    FOR   A    PATENT — THE    TITLE. 

THE  proceedings  on  the  application  for  a  patent  *  commence 
with  the  preparation  of  a  Declaration,  to  the  effect  that 
the  applicant  is  in  possession  of  an  invention  whereof  he, 
or  in  the  case  of  a  joint  application  one  or  more  of  the 
applicants,  claims  or  claim  to  be  the  true  and  first  inventor 
or  inventors.  With  this  is  combined  a  petition  that  a 
patent  may  be  granted  to  the  applicant  or  applicants  for 
the  invention.  The  form  of  the  declaration,  which  must 
bear  the  stamp  of  II. ,  is  set  forth  in  the  second  schedule 
to  the  Patents  Eules,  1890.  The  declaration  must  be 
signed  by  the  applicants,  but  need  not  be  made  under 
the  Statutory  Declarations  Act,  1835.  When  left  at  the 
Patent  Office  it  must  be  accompanied  by  either  a  provisional 
or  complete  Specification  (see  the  next  chapter),  and  that 
specification  must  in  either  case  commence  with  the  title 
(Patents  Act,  1883,  sect.  5).  The  application  and  specifica- 
tion are  then  referred  by  the  Comptroller  to  an  examiner, 
part  of  whose  duty  is  to  ascertain  and  report  whether  the 
title  sufficiently  indicates  the  subject-matter  of  the  invention 
(sect.  6)  ;  and  if  he  reports  that  the  title  does  not  sufficiently 
indicate  the  subject-matter  of  the  invention,  the  Comptroller 
may  require  it  to  be  amended  (sect.  7).  He  is  virtually 
empowered  to  make  other  amendments  in  the  title  under 

1  Stamped  forms  of  application  have  been  placed  on  sale  at  the  chief 
post-offices  of  the  United  Kingdom.  Applications,  as  well  as  any  other 
document,  notice,  &c.,  required  to  be  left  at  the  Patent  Office,  may  be  sent 
in  a  prepaid  letter  through  the  post.  See  section  97  of  the  Act  of  1883, 
and  Eule  16A  of  the  Patents  Eules,  1890. 

The  procedure  on  applications  is  regulated  by  Eules  8,  9,  10,  16A,  17, 
I?A,  and  23  of  the  Patents  Bules,  1890. 


I'd  THE  TITLE 

Beets.  7  and  9  of  the  Act  of  1883.     (Dart'*  1  (I riff. 

P.  C.  807.) 

THE  TITUt. 

The  title  is  the  short  statement  by  which  the  inv<  ntor 
sets  forth  in  very  general  terms  the  object  of  the  im«  ntion  ; 
and  this  being  repeated  in  the  body  of  the  declaration,  and 
finally  transfi-rred  into  the  patent,  is  styled  the  Title  of  the 
Patent.  Thus  he  may  apply  for  a  patent  in  respect  of 
1  Improvements  in  locomotive  steam  engines/  or  for  '  A  new 
or  improved  sewing  machine/  or  for  '  Improved  methods  of 
purifying  illuminating  gas/  The  words  here  placed  be- 
tween marks  of  quotation  would  be  the  titles  of  the  resp< 
patents. 

At  a  time  when  a  provisional  specification  was  not  re- 
quired to  be  lodged  with  the  petition,  and  when  consequently 
tin  title  could  not  be  officially  compared  with  a  description 
of  the  invention,  it  not  unfrequently  happened  that  the  title 
was  incorrect,  and  patents  were  sometimes  lost  from  want 
of  care  in  this  particular.  For  if  the  title  was  too  compre- 
hensive— that  is,  if  it  extended  to  matters  not  included  in 
the  invention,  the  patent  was  bad.  If,  on  the  other  hand, 
it  was  too  narrow,  besides  excluding  by  its  very  terms  some- 
thing which  the  inventor  might  have  secured,  the  patent 
would  likewise  be  held  bad  in  case  the  specification  went 
beyond  the  title. 

But  now,  since  the  title  is  accompanied  by  an  outline 
or  full  description  of  the  invention,  in  the  shape  of  a  pro- 
visional or  complete  specification,  and  the  papers  are  sub- 
mitted to  an  official  examination,  any  false  step  that  the 
inventor  may  make  in  regard  to  the  title  will  probably  be 
detected,  and  can  be  rectified.  This,  however,  will  involve 
delay  and  trouble,  and  the  inventor  will  do  well  to  take  some 
pains  to  frame  an  unobjectionable  title  at  first. 

In  framing  the  title  the  inventor  must  carefully  avoid 
the  use  of  language  which  will  lay  it  open  to  the  charges  of 
being  '  too  large,  uncertain,  inapplicable,  inexplicable,  in- 
consistent, vague,  ambiguous,  and  at  variance  with  the  spe- 
cification ' — charges  which  it  appears  from  a  reported  case 


THE  TITLE  91 

were  once  heaped  upon  an  unfortunate  title  relating  to  the 
simple  matter  of  paving  with  wood. 

With  the  view  of  showing  the  inventor  who  is  engaged 
in  preparing  his  application  for  a  patent  what  are  the  prin- 
cipal errors  to  be  avoided  in  framing  the  title,  the  following 
cases  have  been  selected  from  those  decided  by  the  Courts 
under  the  old  law. 

Where  the  title  bore  evidence  upon  its  face  of  an  inten- 
tion to  deceive  the  public  as  to  the  subject-matter  of  the 
invention,  this  was  a  point  which  weighed  heavily  against 
the  patentee.  (Cook  v.  Pearce,  8  Q.  B.  1044.) 

The  title  of  the  invention  spoke  of  a  tapering  brush  ;  the 
specification  disclosed  the  invention  of  a  brush  in  which  the 
bristles  were  of  an  unequal  length,  but  there  was  no  tapering 
to  a  point.  The  patent  was  held  bad.  (Rex  v.  Metcalf, 
2  Stark.  E.  249.) 

The  title  was  '  Certain  improvements  in  the  flageolet, 
whereby  the  fingering  will  be  rendered  more  easy,  and  notes 
produced  that  were  never  before  produced.'  It  appeared 
that  only  one  new  note  was  produced  by  the  improved  in- 
strument, and  this  was  held  to  be  a  fatal  objection.  (Bain- 
bridge  v.  Wigley,  Parl.  Eep.  197.) 

The  title  was  '  A  new  and  improved  method  of  drying 
and  preparing  malt ; '  but  the  invention  specified  was  a 
process  of  producing  a  colouring  matter  for  beer,  by  sub- 
mitting malt,  prepared  in  the  ordinary  manner,  to  a  high 
temperature.  This  patent  was  likewise  held  bad.  (Rex  v. 
Wheeler,  2  B.  &  Aid.  345.) 

A  patent  was  obtained  for  an  improved  method  of  light- 
ing cities,  towns,  and  villages ;  but  it  appeared  that  the 
invention  consisted  in  the  improvement  of  an  old  street 
lamp.  The  title  was  held  too  general  in  its  terms,  and  the 
patent  could  not  be  supported.  (Cochrane  v.  Smethurst, 
1  Stark.  205.) 

Another  patent  held  bad,  by  reason  of  having  too  general 
a  title,  was  that  contested  hi  the  case  of  Campion  v.  Benyon 
(1  Carp.  Eep.  418).  The  patent  was  for  'A  new  and  im- 
proved method  of  making  double  canvas  and  sailcloth  with 


UL1  TIIK  TITLE 

hemp  and  flax,  or  » ith.  r  of  them,  without  any  starch  v 
ever ; '  but  it  appeared  that  double  sailcloth  had  been  made 
\\ithout  starch  before  the  patent,  and  tin  invention  proved 
r.  ally  to  be  a  new  method  of  preparing  hemp  and  flax,  \\ith 
a  view  to  its  l>eing  woven  into  canvas  and  sailcloth. 

The  title  of  Fulton's  patent  described  the  invention  as  a 
machine  for  giving  an  edge  to  knives,  razors,  scissors,  and 
other  cutting  instruments;  hut  the  invention  appeared, 
from  the  specification,  not  to  be  applicable  to  scissors,  and 
the  patent  was  adjudged  to  be  void.  ir<?«, 

sc.  A-  r.  f.ii.) 

In  Xt'inill  v.  FJIinti  (10  Jur.  N.  s.  fc  C.  IS  W.  R. 

11),  C.  Jl.  Pollock  stated  that,  when  Attorney-General,  he 
had  refused  an  application  for  a  patent  for  '  An  improve- 
ment in  locomotion,'  such  a  title  being  too  general. 

On  the  other  hand,  the  titles  in  the  following  cases  were 
held  sufficiently  certain :  '  Improvements  in  the  manufac- 
ture of  plated  articles,'  when  there  was  only  a  single  im- 
provement (Nickels  v.  llmtltini,  8  Scott,  N.  R.  97).  '  A  new 
or  imju-'ii-i-il  method  of  obtaining  the  reproduction  of  all  tin- 
images  received  in  the  focus  of  the  camera  obscura,'  leaving 
it  a  matter  of  doubt  whether  the  method  was  altogether  a 
new  one,  or  only  an  improvement  ( /;«<//>/  \ .  :  »,  8  C.  B. 
97).  A  process  for  more  distinctly  showing  the  finer  lines 
of  an  engraving  by  means  of  a  glazed  surface  on  the  paper 
designed  to  receive  the  impression  was  held  sufficiently 
described  by  the  words  '  Certain  improvements  in  copper 
and  other  plate  printing  '  (Start;  v.  De  la  Hue,  5  Buss.  822). 
Title,  '  Improvements  in  Carriages : '  the  specification  de- 
scribed improvements  in  adapting  German  shutters  to  car- 
riages. But  as  such  shutters  can  only  be  applied  to  covered 
carriages,  and  the  title  spoke  generally  of  carriages,  it  was 
contended  that  it  was  too  large.  After  argument,  it  was 
held  a  sufficiently  accurate  title  ;  Timlal,  C.  J.,  observing 
that  it  would  endanger  the  validity  of  very  many  patents 
which  have  hitherto  been  free  from  exception,  if  the  mere 
fact  that  their  titles  were  given  in  such  terms  as  to  be 
capable  of  comprising  other  inventions  besides  that  con- 


THE  TITLE  93 

tained  in  the  specification  were  sufficient  to  avoid  them,  in 
the  absence  of  any  proof  of  intention  to  commit  a  fraud  on 
the  Crown,  or  to  deceive  or  mislead  the  public.  (Cook  v. 
Pearce,  8  Q.  B.  1044.) 

A  patent  was  obtained  for  *  Improvements  in  machinery 
for  the  manufacture  of  bobbin  net  lace.'  It  was  objected 
that  the  invention  really  was  only  for  making  a  spot  during 
a  particular  part  of  the  process,  and  was  useless  where  that 
addition  was  not  wanted.  The  Court,  however,  overruled 
the  objection.  (Fisher  v.  Deivick,  1  W.  P.  C.  264.) 

The  title  and  specification  must  be  read  together  ;  and 
if  the  former  should  be  ambiguous,  the  latter  may  explain 
it.  Thus  the  title  of  Neilson's  patent  was  an  invention  'for 
the  improved  application  of  air  to  produce  heat  in  furnaces 
where  bellows  or  other  blowing-apparatus  are  required.' 
The  invention  disclosed  by  the  specification  was  the  intro- 
duction into  the  furnace  of  air  heated  between  the  blowing- 
apparatus  and  the  furnace ;  and  it  was  held  that  this 
answered  sufficiently  well  to  the  title.  (Neilson  v.  Harford, 
1  W.  P.  C.  312,  373  ;  Lister  v.  Norton,  3  E.  P.  C.  203.) 


i»  i  THE  PROVISIONAL  SPECIFICATION 


CHAPTER   VIII. 

THE    PROVISIONAL   SPECIF  I 

THE  fifth  section  of  the  Patents  Act  of  1883  directs  that  the 
application  l  for  a  patent  must  be  accompanied  by  either  a 
provisional  or  complete  specification.  The  latter  instru- 
ment is  the  subject  of  the  next  chapter ;  it  is  to  the  former 
that  we  now  draw  the  reader's  attention.  According  to 
the  third  subsection  of  the  same  section,  a  provisional 
specification  must  describe  the  nature  of  the  invention,  and 
be  accompanied  by  drawings  if  required ;  whilst  by  the 
fifth  subsection  it  is  directed  that  it  must  commence  with 
the  title.  (As  to  size,  form,  &c.,  of  the  drawings,  if  any, 
see  Patents  Rules,  1890,  rr.  80-38.)  It  ought  not  to  com- 
prise more  than  one  ini-ention  (sect.  88),  and  the  Comp- 
troller may  refuse  to  accept  it  if  it  does  comprise  more. 
(As  to  the  meaning  of  the  words  *  one  invention '  see  p.  96.) 
The  applicant,  however,  is  authorised  by  Rule  19  of  the 
Patents  Rules,  1890,  to  amend  the  application  so  as  to 
make  it  apply  to  one  invention  only ;  and  he  can  then  make 
application,  if  he  thinks  proper,  for  separate  patents  for  the 
other  inventions.  In  that  case  every  such  application  will 
be  dated  as  of  the  date  of  the  first  application,  as  if 
originally  made  on  that  date. 

1  The  form  of  the  application  is  given  as  already  stated  in  the  second 
schedule  to  the  Patents  Bales,  1890,  Form  A.  In  case  of  an  application  on 
a  communication  from  abroad  Form  A  1  mast  be  ased.  For  the  form  of 
provisional  specification  see  Roles  5  and  6  (2)  of  1890,  and  Form  B  in  the 
second  schedule  to  those  roles.  As  to  the  procedore  the  reader  is  referred 
to  the  note  on  p.  89. 

Specifications  and  all  other  documents  most  be  written  or  printed  in 
large  and  legible  characters  upon  one  side  only  of  strong  wide-raled  foolscap 
paper  measuring  thirteen  by  eight  inches,  leaving  a  margin  of  two  inches 
on  the  left-hand ;  and  the  signatures  of  the  applicants  or  agents  thereto 
most  be  written  in  a  large  and  legible  hand  (see  Bole  10). 


THE  PROVISIONAL  SPECIFICATION  95 

Then  by  the  sixth  section  the  Comptroller  is  directed  to 
refer  every  application  to  an  examiner,  who  is  to  ascertain 
and  report  to  him  whether  the  nature  of  the  invention  has 
been  fairly  described,  and  the  application,  specification,  and 
drawings  (if  any)  have  been  prepared  in  the  prescribed 
manner.  If  the  examiner  reports  (sect.  7  as  altered  by  the 
2nd  sect,  of  the  Patents  Act,  1888)  that  the  nature  of  the 
invention  is  not  fairly  described,  or  that  the  application, 
specification,  or  drawings  has  not  or  have  not  been  pre- 
pared in  the  prescribed  manner,  or  that  the  title  does  not 
sufficiently  indicate  the  subject-matter  of  the  invention,  the 
Comptroller  may  refuse  to  accept  the  application,  or  require 
that  the  application,  specification,  or  drawings  be  amended 
before  he  proceeds  with  the  application  ;  and  in  the  latter 
case  the  application  shall,  if  the  Comptroller  so  directs, 
bear  date  as  from  the  time  when  the  requirement  is  com- 
plied with. 

Where  the  Comptroller  refuses  to  accept  an  application 
or  requires  an  amendment,  the  applicant  may  appeal  from 
his  decision  to  the  law  officer,  who  will,  if  required,  hear 
the  applicant  and  the  Comptroller,  and  may  make  an  order 
determining  whether,  and  subject  to  what  conditions,  if  any, 
the  application  shall  be  accepted.  (Brown's  Application, 
2  Griffin,  P.  C.  1.)  When  an  application  has  been  accepted, 
the  Comptroller  will  give  notice  thereof  to  the  applicant,  and 
by  Eule  21  of  the  Patents  Kules,  1890,  he  will  advertise 
such  acceptance  in  the  official  journal  of  the  Patent  Office. 
If  (subs.  5  of  sect.  2,  Act  1888),  after  an  application  for  a 
patent  has  been  made,  but  before  the  patent  thereon  has 
been  sealed,  another  application  for  a  patent  is  made, 
accompanied  by  a  specification  bearing  the  same  or  a 
similar  title,  the  Comptroller,  if  he  thinks  fit,  on  the  re- 
quest of  the  second  applicant,  or  of  his  legal  representative, 
may,  within  two  months  of  the  grant  of  a  patent  on  the 
first  application,  either  decline  to  proceed  with  the  second 
application  or  allow  the  surrender  of  the  patent,  if  any, 
granted  thereon. 

Under  section  4  of  the  Patents  Act  of  1885,  where  an 


'.'«;  TION 

application  for  a  patent  has  been  abandoned  or  become 
void,  tin-  specification  and  drawings  (if  any)  shall  not  at 
time  be  open  to  puMir  :  puMMi«  d  la- 

the Comptroller. 

\\  h.  n  the  legal  representative  of  a  deceased  inventor 

intends  to  apply  for  t,  under  tin-  authority  of  the 

:tlth  section  (»f  the  Patent  Act  of  1888,  the  appli* 

must  be  made  within  -i\  months  of  the  decease,  and  it 

must  contain  a  declaration  1-y  tlu  1*  ^al  representative  that 

In  believes  the  person  whom  he  r<  to  have  been  the 

trui'  and  first  inventor  of  the  invention.     An  official  copy 

of  or  extract  from  ihe  will  or  letters  of  administration  must 

mpany  the  application  in  proof  of  the  applicant's  title. 

lk  '20  of  1890.) 

'  One  Inri-ntinn.' — It  has  been  already  stated  that  by 
sect.  88  of  the  Act  of  1888  the  provisional  specification 
ought  not  to  comprise  more  than  one  invention.  The 
question  whether  a  provisional  specification  comprises  more 
than  one  invention  will  often  be  a  delicate  one,  and  no 
general  rule  can  be  laid  down  for  the  inventor's  guidance. 
If  the  words  of  the  Act  were  interpreted  strictly  patents 
would  be  greatly  multiplied,  whilst  a  liberal  interpretation 
cannot  go  far  in  the  face  of  the  clear  language  of  the 
statute.  The  Comptroller  must  be  left  to  exercise  his  dis- 
cretion on  the  facts  of  each  case  subject  to  appeal  to  the  law 
officer.  It  has  been  said  by  a  law  officer  that  if  there  are 
several  heads  of  invention  it  ought  to  be  shown  in  the  pro- 
visional specification  that  they  have  all  a  common  object. 
Under  the  title  of  Improvements  in  Railway  Carriages,  an 
attempt  to  include  improvements  in  the  seats,  doors,  win- 
dows, coupling  apparatus,  and  illumination  would  doubtless 
be  a  failure,  and  yet  all  these  heads  of  invention  have  the 
common  object  of  improving  a  railway  carrin 

The  following  cases  have  been  decided  by  the  law  officers 
on  appeal  and  have  been  reported. 

"Where  there  is  a  new  combination  of  parts  and  some 
of  the  subordinate  parts  are  themselves  new,  they  may  all 
be  included  along  with  the  entire  combination  in  the  same 


THE  PEG-VISIONAL  SPECIFICATION  97 

specification.  But  where  a  specification  describes  a  com- 
bination of  parts  and  also  comprises  a  minor  combination 
which  is  stated  to  be  applicable  not  only  to  the  purpose  of 
the  entire  combination  but  to  a  purpose  distinct  therefrom, 
the  latter  application  must  be  considered  a  different  inven- 
tion and  ought  not  to  be  included  in  the  same  specification. 
(Jones's  Patent,  1  Griff.  P.  C.  265;  Hearson's  Patent,  1 
Griff.  P.  C.  266 ;  Robinson's  Patent,  1  Griff.  P.  C.  267.) 

Alternative  devices  for  effecting  the  same  object  ought 
to  be  treated  as  one  invention ;  for  example,  several  devices 
of  an  analogous  nature,  or  cognate  devices,  for  securing 
the  rails  on  a  railway.  (Jones's  Patent,  1  Griff.  P.  C.  265.) 

The  thirty-third  section  of  the  Act  of  1883  enacts  that 
it  shall  not  be  competent  for  any  person  in  an  action  or 
other  proceeding  to  take  any  objection  to  a  patent  on  the 
ground  that  it  comprises  more  than  one  invention. 

Office  of  the  Provisional  Specification. — A  general  descrip- 
tion of  the  invention,  fairly  showing  its  real  nature,  is  suffi- 
cient for  the  provisional  specification.  An  applicant  is  not 
bound  to  describe  the  way  in  which  his  invention  can  be, 
carried  into  effect.  (Woodward  v.  Sanswn,  4  E.  P.  C.  174  ; 
Siddett  v.  Vickers,  8  E.  P.  C.  426.)  It  is  enough  if  its 
principal  and  essential  features  are  set  forth. 

In  the  next  chapter  it  will  be  shown  that  it  is  not  allow- 
able to  vary  the  invention  in  any  important  respect  when  the 
complete  specification  is  in  preparation,  or  to  introduce 
new  matter  into  that  instrument ;  and  the  chief  object  of 
the  provisional  specification  is  to  afford  means  for  securing 
the  identity  of  the  invention  at  the  time  of  application  and 
when  finally  specified. 

The  provisional  specification  is  not  intended  to  ascertain 
the  entirety  but  the  identity  of  the  invention,  said  Pollock, 
C.  B.,  in  Neicatt  v.  Elliott,  1  H.  &  C.  797.  And  see  also 
Foxwell  v.  Bostock,  4  De  G.  J.  &  S.  298. 

*  The  office  of  the  provisional  specification '  (said  Mr. 
Justice  Byles  in  Newall  v.  Elliott,  4  C.  B.  N.  s.  269)  '  is 
only  to  describe  generally  and  fairly  the  nature  of  the 
invention,  and  not  to  enter  into  all  the  minute  details 

H 


!',s  THE  PROVISIONAL  SPECIFICATION 

as  to  the  manner  in  which  the  invention  in  to  be  carried 

OUt.' 

4  A  provisional  specification '  (said  >V  r ' 
Stontr  v.  ToiU,  I..  I:,  1  Ch.  I).  58)  '  is  not  intended  to  con- 
tain a  complete  description  of  tin-  thing  BO  as  to  enable  any 
workman  of  ordinary  skill  to  make  it,  but  only  to  disclose 
the  invention  -fairly,  no  doubt,  hut  in  its  rough  state,  until 
:!:••  inventor  can  perfect  its  details.' 

'  The  office  of  the  provisional  specification '  (said 
Ch,lni»i\,r<l  in  !',»><  v.  7<i/,//y,  L.  K.  2  Ch.  127)  'is  to 
describe  the  nature  of  the  invention,  not  with  minute  par- 
ticularity, hut  with  sufficient  precision  and  accuracy  to  in- 
form the  law  officer  what  is  to  be  the  subject-matter  of  the 
it.  It  is  not  at  all  necessary  that  the  provisional 
speciGcation  should  describe  the  mode  or  modes  in  which 
the  invention  is  to  be  worked  or  carried  out.' 

For  further  remarks  by  various  learned  judges  as  to 
the  office  of  the  provisional  specification,  see  }l'»»,ln-nrd  v. 
Ktnsum  (4  R.  P.  C.  178).  Si,M,-U  v.  1'iVArr*  (5  R.  P.  C. 
79,  426),  Crampt.m  v.  I'at,-ntj  Inrcttmcnt  Co.  (5  R.  P.  C. 
397). 

When  an  inventor  is  engaged  in  preparing  his  provi- 
sional specification,  he  ought  to  keep  in  mind  that  • 
part  of  the  invention,  excepting  details,  intended  to  be 
claimed  by  the  complete  specification,  ought  to  be  fore- 
shadowed in  the  preliminary  instrument. 

It  sometimes  happens  that,  after  a  provisional  specifica- 
tion has  been  lodged,  an  inventor  thinks  it  desirable  to 
abandon  it  and  lodge  another  in  a  different  form.  Under 
the  old  law  it  was  held  that  a  patent  obtained  upon  a  second 
provisional  specification,  when  filed  within  the  six  months' 
term  of  provisional  protection,  was  valid,  as  the  first  specifi- 
cation had  not  become  public  by  the  mere  fact  of  abandon- 
ment. And  in  Litter  v.  Aorfoit  (3  R.  P.  C.  206)  it  was  held 
that  where  an  inventor  had  lodged  a  provisional  specifica- 
tion, and  then  within  six  months  had  lodged  a  second  one 
for  the  same  invention,  proceeding  upon  the  latter  to  obtain 
a  patent  dated  in  1881,  it  was  no  objection  to  the  patent 


THE  PKOVISIONAL  SPECIFICATION  95 

that  the  patentee  had  in  the  interval  between  the  dates  of 
lodging  the  two  specifications,  and  therefore  before  the  date 
of  his  patent,  publicly  exercised  his  invention  and  sold  the 
products. 

By  the  fourteenth  section  of  the  Patents  Act  of  1883, 
where  an  application  for  a  patent  in  respect  of  an  invention 
has  been  accepted,  the  invention  may  during  the  period 
between  the  date  of  the  application  and  the  date  of  sealing 
such  patent  be  used  and  published  without  prejudice  to  the 
patent  to  be  granted  for  the  same  ;  and  such  protection 
from  the  consequences  of  use  and  publication  is  termed 
provisional  protection. 

This  protection,  however,  gives  the  applicant  no  rights 
against  the  public.  He  is  only  protected  against  the  con- 
sequences of  his  own  publication  in  case  of  his  employing 
workmen,  making  experiments,  or  exercising  the  invention 
(Ex  parte  Bates  &  Eedgate,  L.  E.  4  Ch.  577) ;  that  is  to 
say,  he  will  not  thereby  prejudice  the  patent  afterwards 
granted  to  him.  He  must  not  forget,  however,  that  as  he 
cannot  take  any  legal  proceedings  for  infringements  com- 
mitted before  the  publication  of  the  complete  specification 
(sect.  13),  his  dealings  with  the  invention  even  under  pro- 
tection should  be  conducted  with  due  caution. 


D  2 


100  THE  COMPLETE  SPECIFICATION 


CHAPTER   IX. 

THE   COMPLETE   SPECIFICATION. 

WHKTHKU  there  ever  existed  an  implied  compact  between 
a  patentee  and  the  public  with  regard  to  a  disclosure  of  tin- 
invention,  as  many  lawyers  formerly  supposed  and  some 
doubted,  is  a  question  which  it  is  unnecessary  to  discuss  in 
these  pages.  It  is  sufficient  for  all  practical  purposes  to 
say  that  the  Patents  Act  of  1852  imposed  upon  every 
patentee  the  duty  of  particularly  describing  and  ascertain- 
ing the  nature  of  the  invention,  and  in  what  manner  it  was 
to  be  performed ;  and  that  the  Patents  Act  of  1883  has  laid 
upon  every  applicant  a  like  obligation  in  identical  language 
(sect.  5,  subs.  4).  The  instrument  by  which  the  applicant 
undertakes  to  satisfy  the  requirements  of  the  law  is  known 
as  the  Complete  Specification.  It  is  by  this  instrument 
that  the  public  are  made  acquainted  with  the  inventor's 
secret,  and  he  is  bound  to  describe  it  clearly  and  fully,  with 
the  view  of  enabling  others,  when  the  proper  time  comes, 
to  work  the  invention  if  they  desire  to  do  so.  In  the 
meantime  the  public  are  entitled  to  know  what  it  is  they 
are  prohibited  from  using,  that  they  may  not  unawares 
incur  liability. 

The  reader  will  perceive  before  he  arrives  at  the  end  01 
this  chapter  that  the  security  of  a  patentee's  privileges 
largely  depends  upcn  the  shape  given  to  this  instrument. 
It  is  therefore  necessary  that  he  should  exercise  the  greatest 
care  and  circumspection  in  its  preparation.  As  Sir  George 
Jessel,  then  Master  of  the  Bolls,  once  remarked  in  court, 
'  it  is  very  difficult  to  draw  a  complete  specification.'  And 
the  judges  on  the  bench  very  frequently  complain  of  the 
ambiguities,  obscurities,  and  other  defects  of  the  specifica- 


THE  COMPLETE  SPECIFICATION  101 

tions  that  go  before  them,  not  only  rendering  the  task  of 
interpretation  difficult,  but  putting  in  peril  the  whole  edifice 
which  the  patentee  has  laboriously  built.  It  may  be  thought, 
perhaps,  that  after  the  document  has  passed  the  ordeal  of 
official  examination  no  further  question  ought  to  arise  as 
to  its  sufficiency.  An  inventor,  however,  should  not  place 
too  great  reliance  upon  this,  but  should  adopt  every  means 
in  his  power  to  make  not  only  the  complete  but  the  pro- 
visional specification  perfectly  correct,  and  in  accordance 
with  both  the  letter  and  the  spirit  of  the  law,  that  they 
may,  if  at  any  time  disputed,  be  held  good  upon  their  own 
merits. 

After  an  account  of  the  procedure  has  been  given  the 
greater  part  of  this  chapter  will  be  devoted  to  a  statement 
of  the  rules  by  which  the  inventor  should  be  guided  in 
preparing  this  important  instrument.  These  rules  will 
make  him  acquainted  with  the  chief  requirements  of  the 
law,  and  will  put  him  on  his  guard  as  to  the  faults  which 
he  is  most  likely  to  commit.  Our  remarks  will  be  supported 
throughout  by  references  to  the  reported  cases. 


PROCEDURE. 


We  have  seen  in  the  last  chapter  that,  by  the  fifth 
section  of  the  Patents  Act  of  1883,  an  application  for  a 
patent  must  be  accompanied  by  either  a  provisional  or  a 
complete  specification.  In  the  great  majority  of  cases  an 
inventor  needs  further  time  for  making  experiments  and 
testing  the  invention  with  a  view  to  its  improvement  and 
the  working  out  of  details,  all  which  may  be  safely  done 
under  the  protection  of  a  provisional  specification ;  but  if 
he  lodges  the  complete  instrument  at  the  time  of  applica- 
tion he  deprives  himself  of  the  opportunity  of  improving 
the  invention,  and  of  adding,  perhaps  greatly,  to  its  value. 
Moreover,  inventors  who  wish  to  obtain  patents  in  other 
countries  should  bear  in  mind  that  the  previous  publication 
of  an  invention  by  a  complete  specification  in  this  country 
may  be  a  bar  to  a  valid  patent  unless  the  case  is  one  that 


102  THE  COMPLETE  SPECIFICATION 

falls  within  the  operation  of  tin-  fourth  Article  of  tli-   I 
national  Convention  as  to  Patents. 

The  complete  specification,  whether  left  on  application 
or  subsequently,  must,  in  the  words  of  the  Act,  '  particularly 
describe  and  ascertain  the  nature  of  the  invention,  ami  in 
what  manner  it  is  to  be  performed,  and  must  be  accom- 
panied by  drawings  if  n<|um.l.'  It  must  commence  with 
the  title,  and  must  end  with  a  distinct  statement  of  the 
invention  claimed.  The  form  of  the  in-trument  is  Form  C, 
L'iv.-ii  in  the  second  schedule  of  the  Patents  Rules,  1890.1 
If  left  with  the  application  (sect.  6)  the  papers  are  referred 
l»y  the  Comptroller  to  an  examiner,  whose  duty  it  is  to 
ascertain  and  report  to  the  Comptroller  whether  the  nature 
of  the  invention  has  been  fairly  described,  and  whethe 
application,  specification,  and  drawings  (if  any)  have  been 
prepared  in  the  prescribed  manner,  and  the  title  sufficiently 
indicates  the  subject-matter  of  the  invention.  If  the 
examiner  reports  in  the  negative,  the  Comptroller  may 
require  the  application,  specification,  or  drawings,  to  be 
amended  before  he  proceeds  with  the  application,  sui 
to  appeal  to  the  law  officer,  who,  after  hearing  the  applicant 
and  the  Comptroller,  may  make  an  order  determining 
whether,  and  subject  to  what  condition,  if  any,  the  applica- 
tion shall  be  accepted.  When  an  application  has  been 
accepted,  the  Comptroller  will  give  notice  thereof  to  the 
applicant. 

If  the  applicant  (sect.  8)  does  not  leave  a  complete 
specification  with  his  application,  he  may  leave  it  at  any 
subsequent  time  within  nine  months  from  the  date  of  appli- 
cation.2 But  by  the  third  section  of  the  Act  of  1885  the 
Comptroller  has  power  to  extend  the  time  for  another 

1  A  fee  of  41.  is  payable  on  filing  a  complete  specification  with  the  appli- 
cation :  if  filed  afterwards  the  fee  is  31.  As  to  the  size  of  paper,  Ac.,  see  the 
footnote  on  page  106. 

1  Whenever  the  last  day  for  leaving  a  document  at  the  Patent  Office 
shall  happen  to  fall  on  Christmas  Day,  Good  Friday,  or  on  a  Saturday  or 
Sunday,  or  on  a  day  observed  as  a  holiday  at  the  Bank  of  England,  or  on 
any  day  observed  as  a  public  fast  or  thanksgiving,  the  document  may  be  left 
on  the  day  next  following  any  of  these  days  (sect.  98). 


THE  COMPLETE  SPECIFICATION 

month  on  payment  of  the  prescribed  fee.  And  Rule  50  of 
the  Patents  Rules,  1890,  requires  the  application  for  an 
extension  of  time  to  state  in  detail  in  what  circumstances 
and  upon  what  grounds  the  extension  is  applied  for.  The 
Comptroller  may  require  proof  of  the  applicant's  allega- 
tions. 

If  the  complete  specification  is  not  left  within  due  time 
the  application  will  be  deemed  to  be  abandoned.  The  nine 
months  will  expire  on  that  day  of  the  ninth  month  which 
corresponds  to  the  day  of  the  application.  Where  a  complete 
specification  is  left  after  a  provisional  specification  the 
Comptroller  will  refer  both  to  an  examiner,  for  the  purpose 
of  ascertaining  whether  the  complete  specification  has  been 
prepared  in  the  prescribed  manner,  and  whether  the  inven- 
tion particularly  described  in  the  complete  specification  is 
substantially  the  same  as  that  described  in  the  provisional. 
If  the  examiner  reports  that  these  conditions  have  not  been 
complied  with,  the  Comptroller  may  refuse  to  accept  the 
complete  specification  unless  and  until  the  same  shall  have 
been  amended  to  his  satisfaction ;  but  such  refusal  is  subject 
to  appeal  to  the  law  officer,  who,  if  required,  will  hear  the 
applicant  and  the  Comptroller,  and  may  make  an  order 
determining  whether  and  subject  to  what  conditions  the 
complete  specification  shall  be  accepted  (subsect.  3). 

The  fact  that  the  complete  narrow's  the  range  of  the 
provisional  specification  (e.g.  where  the  provisional  specifi- 
cation sets  forth  a  principle,  whilst  the  complete  only  claims 
special  mechanism)  affords  the  Comptroller  no  ground  of 
itself  for  refusing  to  accept  the  former.  (Everitt's  Case, 
2  Griffin  P.  C.  27.) 

In  the  opinion  of  two  law  officers,  if  the  specification 
ends  with  a  real  statement  of  the  invention  claimed,  distinct 
from  the  description  of  the  invention  in  the  body  of  the 
specification,  the  Patent  Office  has  no  power  to  inquire 
whether  the  claim  is  in  conformity  with  the  preceding  de- 
scription or  not.  But  a  claim  which  says  no  more  than 
'  I  claim  the  improved  machine  substantially  as  described  ' 
would  not  be  enough.  That  would  be  held  to  be  merely  a 


104  THK  COMPLETE  SPECIFICATION 

colourable  compliance  \\i\\\  the  f»th  Hubs,  of  sect.  5  of  tin- 
Act  of  1883,  and  not '  a  distinct  statement  of  the  inv.  nti<>n 
claimed.'  i.sWf/r*  I',,t,nt,  I  (irilVin  1'.  C.  'JG8.) 

In  Si.1,1,11  v.  r/rAvm  I.',  I!.  I1.  C.  HC,  it  u;is  h.ld  that  the 
5th  subs,  of  sect.  6  of  the  Act  of  188U  i  in<  rely  directory, 
and  that  non-compliance  \\ith  the  direction  does  not  in- 
validate the  patent. 

As  a  patentee  cannot  recover  damages  in  respect  of  in- 
fringements committed  In-fore  the  publication  <>f  the  com- 
plete specification  (sect.  13  of  the  Act  of  1883),  it  is 
il.  -irahle  in  many  cases  to  file  it  \\ii\\  us  little  delay  as 
possible. 

By  subs.  4  of  sect.  9  of  the  Act  of  1883,  u: 
complete  specification  is  accepted  within  twelve  months 
from  the  date  of  application,  then  (save  in  the  case  of  an 
appeal  having  been  lodged  against  the  refusal  to  accept) 
the  application  will  become  void  at  the  expiration  of  that 
time.  But  the  Comptroller  is  empowered,  by  sect.  3  of  the 
Act  of  1885,  to  extend  the  time  for  three  months  on  pay- 
ment of  the  prescribed  fee. 

In  the  event  of  the  applicant's  death  before  leaving  a 
complete  specification,  no  power  is  expressly  given  by  the 
Act  to  his  legal  representatives  to  leave  a  specification  at 
the  Patent  Office,  or  to  the  Comptroller  to  accept  it  if 
tendered.  But  perhaps  it  may  be  held  that  such  powers 
are  impliedly  given  by  subsection  (3  b)  of  the  twelfth  sec- 
tion of  the  Act  of  1883. 

On  the  acceptance  of  the  complete  specification  the 
Comptroller  will  give  notice  thereof  to  the  applicant,  and 
will  advertise  the  acceptance  in  the  official  journal,  and  the 
application  and  specification  or  specifications,  with  the 
drawings,  if  any,  will  then  be  open  to  public  inspection 
(sect.  10,  and  Rules  21  and  22). ! 

After  the  acceptance  of  a  complete  specification,  and 

1  If  anyone  wishes  to  be  informed  as  soon  as  a  complete  specification  is 
accepted,  or  an  application  for  an  amendment  is  entered,  he  should  forward 
a  copy  of  Form  Q  (bearing  a  stamp  of  05.).  with  a  request  for  such  infor- 
mation. 


THE  COMPLETE  SPECIFICATION  105 

until  the  date  of  sealing  a  patent  in  respect  thereof,  or  the 
expiration  of  the  time  for  sealing,  the  applicant  shall  have 
the  like  privileges  and  rights  as  if  a  patent  for  the  inven- 
tion had  been  sealed  on  the  date  of  the  acceptance  of  the 
complete  specification  :  Provided  that  an  applicant  shall 
not  be  entitled  to  institute  any  proceeding  for  infringement 
unless  and  until  a  patent  for  the  invention  has  been  granted 
to  him  (sect.  15). 

It  was  decided  in  Ex  parte  Henry  (L.  E.  8  Ch.  167) 
that  a  second  applicant  who  had  filed  a  complete  specifica- 
tion along  with  his  petition  under  the  ninth  section  of  the 
Patents  Act  of  1852,  and  had  thereby  become  entitled  for 
six  months  to  '  the  like  powers,  rights,  and  privileges,  as 
might  have  been  conferred  on  him  by  letters  patent  duly 
sealed,  as  of  the  date  of  the  application,'  did  not  acquire 
the  rights  of  a  patentee  so  as  to  prevent  a  person  who  had 
previously  applied  for  a  patent  for  a  similar  invention  from 
obtaining  a  patent. 

It  is  directed  by  section  9,  subsection  5  (as  amended  by 
sect.  3  of  the  Act  of  1888),  that  the  reports  of  examiners 
shall  not  in  any  case  be  published  or  be  open  to  public  in- 
spection, and  shall  not  be  liable  to  production  or  inspection 
in  any  legal  proceeding,  unless  the  court  or  officer  having 
power  to  order  discovery  in  such  legal  proceeding  shall 
certify  that  such  production  or  inspection  is  desirable  in 
the  interests  of  justice,  and  ought  to  be  allowed.  Specifica- 
tions accompanying  applications  which  have  been  abandoned 
or  become  void  are  not  to  be  open  to  public  inspection  or 
published  (sect.  4  of  the  Act  of  1885). 

Clerical  Errors. — In  case  of  clerical  errors  in  a  spe- 
cification they  could  only  be  amended  formerly  by  order 
of  the  Master  of  the  Eolls.  (Johnson's  Patent,  L.  K.  5 
Ch.  D.  503,  and  the  cases  there  cited.)  This  jurisdiction 
still  subsists.  (Re  Gare's  Patent,  L.  K.  26  Ch.  D.  105.)  In 
Dixon's  Patent  (January  15,  1881)  the  M.  E.  required  from 
the  applicant  an  undertaking  not  to  take  proceedings  for 
infringements  committed  before  the  date  of  the  amending 
order.  But  now,  by  sect.  18  of  the  Act  of  1883,  such 


106  THE  COMPLETE  SPECIFICATIOir 

•s  may  be  amended,  after  the  patent  baa  been  granted, 
he  Comptroller  on  such  terms  as  he  may  thin). 
Before  the  issue  of  the  patent  clerical  errors  in  or  in 
nection  with  the  application  may  be  corrected  by  him  under 
the  91st  section  of  the  Act  of  1883. 

DRAWIKO*. 

The  Patents  Act  of  1883  (sect.  5,  subsect.  4)  directs  that 
a  complete  specification  must  be  accompanied  by  drawings 
if  required.1  Those  who  are  called  upon  to  interpret  the 
instrument  \\ill  look  both  at  the  words  and  the  drawings, 
with  the  view  of  making  them  explain  each  other,  and  of 
arriving  at  the  patentee's  meaning.  (Abbott,  C. »/.,  in  Jiloxam 
v.  FA*»'ct  I  C.  iV  I'.  ~>i;i.)  Many  inventions  can  be  ex- 
plained perfectly  well  without  any  drawings;  but  wherever 
machines  are  the  subject  of  or  connected  with  tin-  inv»  n- 
tion,  drawings  should  always  accompany  the  specification, 
for  in  such  a  case  the  relation  of  the  parts  will  be  clear 
at  once  through  a  visual  representation,  when  a  verbal 
<lt  -M-riptiou  might  be  utterly  unintelligible.  Care  must  be 
taken  that  the  patentee  does  not  bind  himself  to  the  par- 
ticular  form  given  in  the  drawing  when  he  does  not  so 
intend.  It  may  be  that  only  a  particular  form  is  required 
to  be  secured,  because  no  other  form  will  effect  the  pro- 
posed result.  In  such  a  case,  if  the  form  is  not  copied,  the 
invention  is  not  made  use  of.  But  in  most  cases  it  is  more 
than  one  form  which  is  sought  to  be  protected  by  patent, 
and  the  form  given  in  the  drawing  is  only  to  be  taken  as 
an  illustration.  This  fact  ought  to  be  distinctly  shown  in 
the  specification. 

In  Arnold  v.  Bradbury  (L.  R.  6  Ch.  706)  it  was  con- 
tended by  the  defendants  in  a  suit  for  restraining  the  in- 
fringement of  a  patent  for  an  improved  ruffle,  and  the 

1  Boles  80-33  of  the  Patents  Rules,  1890,  contain  regulations  as  to  the 
sizes  and  methods  of  preparing  the  drawings  accompanying  the  provisional 
or  complete  specifications.  Rule  33  directs  that  if  an  applicant  desires  to 
adopt  the  drawings  lodged  with  his  provisional  specification  as  the  drawings 
of  his  complete  specification  he  should  refer  to  them  as  those  '  left  with  the 
provisional  specification.' 


THE  COMPLETE  SPECIFICATION  10? 

machinery  for  making  the  same,  that  the  patentee  had  not 
described  the  mode  in  which  the  ruffle  was  made;  but 
Lord  Hatherley,  C.,  held  that  as  the  machine  was  very 
simple,  and  as  the  drawing  showed  how  it  was  worked,  that 
was  sufficient.  (See  also  Hastings  v.  Brotvn,  1  E.  &  B. 
454 ;  Morton  v.  Middleton,  1  Cr.  S.  3rd  Ser.  722  ;  Daw  v. 
Eley,  L.  E.  3  Eq.  500  n.,  14  W.  E.  126  ;  Poupardv.  Fardell, 
18  W.  E.  127.) 

It  seems  that  a  patentee  will  not  be  allowed,  in  an 
action  brought  by  him  for  an  infringement,  to  refer  to  a 
drawing  as  descriptive  of  a  material  part  of  the  invention 
not  described  in  the  letterpress  of  the  specification.  (Clark 
v.  Adie,  L.  E.  10  Ch.  667  ;  affirmed  on  appeal,  L.  E.  2  App. 
Cas.  315 ;  Macfarlane  v.  Price,  1  Stark,  199,  1  W.  P.  C. 
74  w.) 

In  the  matter  of  Pullan's  Patent  (May  1878),  leave  was 
given  by  the  Lord  Chancellor  upon  an  ex  parte  application  to 
correct  a  filed  specification  by  the  addition  of  drawings 
alleged  to  have  been  omitted  through  inadvertence.  The 
drawings  so  added  were  not  described  in  the  specification. 
Some  months  after  the  addition  was  effected  an  application 
was  made  to  the  Lord  Chancellor  by  a  person  who  had 
been  threatened  with  an  action  for  infringing  the  patent  to 
re-hear  the  original  application.  The  Lord  Chancellor 
decided  to  hear  the  matter  afresh,  and  upon  reading  the 
affidavits  filed  on  both  sides,  and  finding  that  his  order  had 
been  made  on  imperfect  information,  ordered  the  added 
drawings  to  be  struck  out  of  the  specification,  with  costs. 

RELATION   OF  THE   COMPLETE   TO   THE   PROVISIONAL   SPECIFICATION. 

We  have  seen  that  the  provisional  specification  need 
not  contain  all  the  details  by  which  the  invention  is  pro- 
posed to  be  carried  into  effect ;  it  is  sufficient  if  a  broad 
outline  of  the  invention  is  there  sketched,  so  that  its  whole 
nature  is  ascertainable.  On  the  other  hand,  it  is  permis- 
sible for  a  patentee  to  let  drop  some  of  the  features  of  the 
provisional  specification  when  he  comes  to  prepare  his  com- 
plete specification,  provided  there  is  no  fraud ;  that  the 


108  THE  COMPLETE  SPECIFICATION 

fimfintiaJ  features  of  the  invention  are  preserved;  and  that 
the  complete  specification  does  not  claim  something  «lif- 

i   from   the   invention    described   in   tin-   ]>n>vi~ 
specification.     (Tlionta*  v.  W,lr)t,  L.  R.  1  C.  1'.  LM 
v.  /;»•%,  L.  R.  2  Ch.  134;  Stoner  v.  7"<xW,  L.  1:.  i 
kt  v.  Hitrhcock,  L.  R.  5  Ex.  46.) 

It  is  essential  that  the  nature  of  the  invention  shall  be 
the  same,  but  upon  principle  and  authority  (said  Lope*, 
L.  J.,  in  intum,  4  R.  1'.  C.  178)  it  is  clear 

that  improvements  in  the  arrangement  of  the  mechanism, 
in  the  relative  position  and  adaptation  of  the  different  parts 
with  tlu-  view  of  producing  the  same  results,  the  substitu- 
tion of  mechanical  equivalents  and  modifications  and 
developments  within  the  scope  of  the  invention  set  out  in 
the  provisional  specification  are  allowable. 

Although  portions  of  the  provisional  specification  may 
within  the  limits  above  mentioned  be  omitted  from  the 
complete  specification  without  endangering  the  validity  of 
the  patent ;  and  although  the  invention  set  forth  in  the 
earlier  document  may  be  expanded  and  developed  when 
the  complete  instrument  comes  to  be  prepared,  in  accord- 
ance with  the  fuller  knowledge  which  the  inventor  may 
then  possess,  yet  he  must  carefully  keep  within  the  lines 
originally  laid  down,  and  must  sedulously  avoid  introduc- 
ing into  the  complete  specification  anything  which  can  be 
construed  as  a  larger  or  different  invention.  A  material 
addition  to,  or  deviation  from,  the  invention  for  which  he 
originally  sought  protection  will  not  be  permitted.  Thus, 
where  the  provisional  specification  set  forth  an  invention 
for  preserving  animal  substances  in  a  fresh  state  for  some 
time,  which  consisted  in  the  application  of  a  definite  mix- 
ture of  an  aqueous  solution  of  gelatine  with  an  aqueous 
solution  of  bisulphite  of  lime,  whilst  the  complete  specifica- 
tion, in  addition  to  the  use  of  that  mixture,  claimed  the 
use  for  the  same  purpose  of  an  aqueous  solution  of  the 
bisulphite  of  lime  alone,  this  was  held  to  be  a  distinct 
matter  not  covered  by  the  provisional  specification.  It  was 
an  invention  '  larger  than  and  different  from  that  disclosed 


THE  COMPLETE  SPECIFICATION  109 

in  the  provisional  specification,'  and  the  patent  was,  there- 
fore, invalid.  (Bailey  v.  Roberton,  L.  E.  3  App.  Gas.  1055, 
affirming  the  decision  of  the  Court  of  Session  in  Scotland) . 

The  plaintiffs  provisional  specification  stated  the  inven- 
tion to  be  an  improved  method  of  treating  oils  for  various 
applications,  and  it  set  forth  a  particular  method  of 
thickening  them.  The  complete  specification  claimed  (1) 
the  particular  method  of  thickening  oil  limited  to  lubrica- 
ting purposes ;  and  (2)  the  combining  of  such  thickened 
oils  with  mineral  oils  as  thereinbefore  described.  The  body 
of  the  specification  stated  that  the  combining  of  thickened 
oils  with  mineral  oil,  irrespective  of  the  precise  means 
adopted  for  thickening  them,  was  part  of  the  invention ; 
that  is,  the  invention  was  alleged  to  cover  the  combining  of 
oils  thickened  by  other  methods  than  by  the  one  claimed 
by  the  first  claim.  It  was  held  by  a  Judge  of  the  Court  of 
Session,  Scotland,  that  there  was  a  fatal  variance  between 
the  two  specifications.  (Hutchison  v.  Patidlo,  4  E.  P.  C.  332.) 

The  title  of  one  of  Mr.  Edison's  important  patents  ob- 
tained in  this  country  in  the  year  1877  was  '  Improvements 
in  instruments  for  controlling  by  sound  the  transmission  of 
electric  currents  and  the  reproduction  of  corresponding 
sounds  at  a  distance.'  In  the  first  part  of  the  provisional 
specification  the  description  of  the  invention'referred  entirely 
to  the  transmission  of  sound  or  the  controlling  of  sound  by 
means  of  electric  currents ;  and  in  the  latter  part  different 
methods  of  carrying  out  this  invention  under  the  varying 
conditions  of  use  were  alluded  to.  The  patentee's  complete 
specification  described,  in  addition  to  the  invention  known 
as  the  Telephone,  which  was  worked  by  electricity,  a  very 
ingenious  instrument  called  the  Phonograph,  which  is  a 
purely  mechanical  contrivance  and  has  nothing  whatever 
to  do  with  electricity  or  magnetism,  nor  has  it  necessarily 
anything  to  do  with  the  transmission  of  sound  to  a  distance. 
The  inventor  described  it  as  a  means  of  recording  the 
sounds  produced  by  the  human  voice  or  otherwise  by 
causing  the  movements  of  a  diaphragm  to  be  registered 
on  paper  or  soft  sheet  metal,  and  then  the  paper  might  be 


I  HK  COMPLETE  8P*  ION 

used  in  an  instrument  to  reproduce  the  sound  upon  a 
<!'  I  irate  diaphragm  by  giving  to  the  same  a  viln 
similar  to  that  originally  given  \>\  tl  The  mode  of 

applying  the  phonograph,  a  complete  instrument  in 
to  the  transmission  of  the  sounds  over  a  telegraph  line  was 
also  described.     It  was  held  1-y  Mr.  who  pre- 

sided at  the  trial  of  an  action  for  the  infringement  of  the 
patent,  that  the  nature  of  the  phonograph  had  not  been 
fairly  described  in  the  provisional  specification,  and  that 
the  patent  was  therefore  invalid.  (Tit--  I'nitxl  7 '/// ;<//•<//. 
*  v.  //.irrwoit,  L.  R.  21  Ch.  D.  746.) 

See  also  7V«/i  v.  /;;///,//,  L.  R.  2  Ch.  127  ;  //../•/•/«•/.*  v. 

,V/nW/.s-.  :j  R.  P.  C.  221;  Ganlnnl  «;///  <HU,«  l'«t.  nt  A]>]>.<il, 
6  R.  P.  C.  22");  Khi'i,  /{mini  <C  Co.  V.  Anylt-A 

Jlniih  c»r]>or<iti<'H,  in  the  Court  of  Session,  Scotland, 
6  R.  P.  C.  414. 

An  inventor  is  not  bound  to  describe  in  his  provisional 
specification  any  mode  of  carrying  the  invention  into  effect, 
but  if  he  does  this,  and  if,  before  lodging  the  complete  PI 
fication,  he  discovers  an  improvement  in  such  mode,  or  if  he 
discovers  a  different  mode,  he  is  bound  to  give  to  the  public 
in  tlr.it  instrument  the  benefit  of  what  he  has  discovered, 
although  there  may  be  improvement  and  even  in\»n- 
tion  which  was  not  known  to  him  at  the  time.  Per  L.  J. 
Cotton,  in  Woodward  v.  Sansum  (4  R.  P.  C.  175).  And  in 
the  same  case  (p.  178)  L.  J.  Lopes  said :  •  It  is  said  the 
complete  specification  describes  a  new  and  separate  in- 
vention not  covered  by  the  provisional  specification.  If 
this  can  be  established  the  patent  would  be  bad.  A  pro- 
visional specification  was  never  intended  to  contain  a  com- 
plete and  exhaustive  description  of  the  invention.  It  was 
intended  to  be  sufficiently  specific  to  disclose  the  nature  of 
the  invention  so  as  to  protect  the  inventor  until  the  time 
for  filing  the  complete  specification,  but  permitting  him  in 
the  meantime  to  perfect  any  details,  to  modify,  supplement, 
and  develop  his  invention,  always  keeping  within  what  I 
may  call  the  ambit  of  his  invention  as  disclosed  in  his  pro- 
visional specification.' 


THE  COMPLETE  SPECIFICATION  111 

In  Bailey  v.  Roberton  (L.  R.  3  App.  C.  1055)  Lord 
Blackburn  said  in  the  House  of  Lords  that  it  is  no  objection 
to  the  complete  specification  if  it  shows  that  there  has  been 
discovery  since  lodging  the  provisional,  and  that  some- 
thing has  been  added  by  way  of  supplement  to  make  the 
invention  really  workable,  the  nature  of  the  invention 
remaining  the  same. 

Under  a  patent  for  improvements  in  laying  down 
marine  telegraphic  cables,  certain  guiding  rings  for  con- 
trolling the  delivery  of  the  cable  were  described  and  claimed 
in  the  complete  specification,  although  they  were  not  men- 
tioned in  the  provisional  specification.  It  was  held  that 
the  patent  was  not  thereby  invalidated.  (Newall  v.  Elliott, 
4  C.  B.  N.  s.  269.) 

In  Lucas  v.  Miller  (2  R.  P.  C.  155)  it  was  held  that 
matters  of  detail,  even  those  that  had  not  occurred  to  the 
inventor  at  the  time  of  lodging  the  provisional  specifi- 
cation, may  be  introduced  into  the  complete  instrument,  if 
they  give  a  better  method  of  carrying  out  the  invention  or 
of  working  it  more  easily. 

These  cases  show  that  when  an  inventor  elaborates  his 
invention  and  renders  it  specific,  when  he  gives  a  more 
particular  and  detailed  description  of  it  in  the  complete 
specification,  he  will  be  allowed  to  follow  out  his  original 
design,  and  to  give  a  fair  development  of  it,  even  to  the 
addition  of  improved  methods  of  carrying  it  into  effect,  but 
he  must  not  make  a  new  departure  nor  introduce  anything 
that  cannot  be  brought  within  the  meaning  and  purport 
of  the  provisional  specification.1 

If  any  part  of  the  invention,  as  described  in  the  com- 
plete specification,  does  not  fall  within  the  title,  the  patent 

1  In  the  following  cases  the  patents  were  attacked  on  the  ground  of 
variance  between  the  complete  and  provisional  specifications,  but  the  objec- 
tions were  overruled  in  all :  Watting  v.  Stevens,  3  B.  P.  C.  30 ;  S.  C.  on 
appeal,  3  B.  P.  C.  151 ;  Moseley  v.  Victoria  Rubber  Co.,  4  B.  P.  C.  248 ; 
Morgan  v.  Windover,  4  B.  P.  C.  417 ;  affirmed  on  appeal,  5  B.  P.  C.  295  ; 
reversed  on  another  point  in  H.  L.,  7  B.  P.  C.  130  ;  Siddell  v.  Vickers,  on 
appeal,  5  B.  P.  C.  416 ;  Grampian  v.  Patents  Investment  Co.,  5  B.  P.  C.  397 ; 
S.C.  on  appeal,  6  B.  P.  C.  287  ;  Oaulard  and  Oibbs'  Patent,  6  B.  P.  C.  532. 


llli  THE  COMPLETE  SPECIFICATION 


1>«    invalid.      (Croll  v.  J  Scott,  C.  B.  R.  479; 

Crottlty  v.  Potter,  Macr.  P.  C.  240.)  However,  where  the 
title  of  a  patent  was  for  'Certain  Improvements  in  tin- 
Doors  and  Sashes  of  Carriages,'  and  the  patentee,  in  his 
specification,  said,  '  I  have  shown  my  invention  as  appli*  <1 
to  railway-carriage  doors  and  windows,  although  they  are 
equally  applicable  to  the  doors  and  windows  of  any  oth<  r 
description  of  carriage,  or  in  any  position  where  doors  and 
windows  are  subject  to  jar  and  vibration/  this  was  hel 
to  extend  his  claim  beyond  the  title  (Oj-l  //  \.  I  [olden,  8  C.  B. 
N.  8.  707).  See  also  AfaMB  v.  Elliott  (10  Jur.  N.  s.  954). 

A  patentee  will  not  be  allowed  to  read  the  provisional 
specification  with  the  view  of  aiding  or  supplying  a  defect  in 
the  complete  specification.  (M<i<  /.<  •/<•<;//  v.  18  C.  B. 

N.s.  52.) 

RULES  TO   BE   OBSERVED   IS    PREPARING   SPECIFICATIONS. 

I'nith.  —  The  first  thing  that  an  inventor  about  to 
prepare  his  specification  should  bear  in  mind  is,  that  he  is 
bound  to  act  with  good  faith.  There  must  be  no  studied 
ambiguity  or  equivocal  language  ;  no  attempt  to  keep  any- 
thing secret  ;  he  must  take  the  public  into  his  confidence, 
and  make  a  full  disclosure  of  his  invention  ;  and  the  whole 
statement  must  be  fair,  open,  explicit,  and  honest.  If  he 
acts  in  any  other  manner,  it  will  go  hardly  with  him  when 
his  specification  comes  to  be  examined  in  a  court  of  justice. 
Definition  of  thr  Ini'rntion.  —  The  next  point  to  be 
attended  to  is  the  accurate  definition  of  the  invention,  so 
that  the  reader  may  clearly  understand  of  what  it  consists. 
In  the  case  of  Macfarlnnr  v.  Pricf  (1  Stark.  199  ;  1  W.  P.  C. 
74),  /."/•'/  KUfnboroiifih  said  that  the  patentee  in  his  specifi- 
cation '  should  say,  My  improvement  consists  in  this  ;  de- 
scribing it  by  words  if  he  can,  if  not  by  reference  to  figures. 
But  here  the  improvement  is  neither  described  in  words  nor 
by  figures.  ...  A  person  ought  to  be  warned  by  the  spe- 
cification against  the  use  of  the  particular  invention,  but  it 
would  exceed  the  wit  of  man  to  discover  from  what  he  is 
warned  in  a  case  like  this.'  '  Every  party  '  (said  Creiswdl,  •/., 


THE  COMPLETE  SPECIFICATION  113 

in  Gibson  v.  Brand,  I  W.  P.  C.  640)  '  is  bound  to  tell  the 
public  clearly  by  his  specification  what  he  claims,  and  what 
they  may  do  or  not  do  without  risk  of  an  action  for  in- 
fringing his  patent.' 

In  Philpott  v.  Hanbury  (2  E.  P.  C.  33),  the  patent  was 
held  bad  because  the  patentee  had  not  told  the  public  the 
nature  of  the  invention  in  reasonably  accurate  language. 
'It  forms  a  condition'  (said  Mr.  Justice  Grove),  'without 
the  fulfilment  of  which  the  patent  is  void,  that  the  patentee 
should  state  the  nature  of  his  invention,  in  order  that 
persons  reading  his  specification  should  know,  and  should 
know  with  reasonable  clearness  and  facility,  what  they  are 
prohibited  from  using  by  the  letters  patent  without  his  per- 
mission or  licence.'  In  regard  to  the  specification  before 
him,  the  learned  judge  said  that  he  could  not  satisfactorily 
frame  any  formula  of  words  which  would  describe  or  reason- 
ably define  what  the  nature  of  the  invention  was.  '  The 
specification  has  not  disclosed  what  is  the  real  nature  of 
the  invention  which  the  patentee  says  he  has  made.' 

And  again,  in  Fairburn  v.  Household  (3  E.  P.  C.  128, 
S.  C.  affirmed  on  appeal,  3  E.  P.  C.  263),  a  patent  was  held 
invalid  because  the  specification  did  not  indicate  with  any- 
thing approaching  to  clearness  or  certainty  what  it  was  that 
the  patentee  claimed  as  a  novelty,  what  it  was  that  he 
relied  on  as  the  real  invention  he  sought  to  protect.  (And 
see  also  Eowcliffe  v.  Morris,  3  E.  P.  C.  17.) 

A  patentee  sometimes  obtains  a  second  patent  for  im- 
provements upon  an  invention  which  formed  the  subject- 
matter  of  a  previous  patent,  and  the  second  specification 
usually  refers  to  the  first.  Care  should  be  taken  in  pre- 
paring the  second  specification  to  make  it  distinguish  clearly 
the  later  improvements  from  the  earlier  invention.  (Eades  v. 
Starbuck  Waggon  Co.  W.  N.  1881,  p.  160.) 

When  the  invention  is  partly  original  and  partly  com- 
municated from  abroad,  it  would  seem  desirable  that  the 
respective  parts  should  be  distinguished  in  the  specification. 
(Renard  v.  Levinstein,  10  L.  T.  N.  s.  177.) 

In  the  case  of  a  patent  for  an  invention  communicated 


114  THK   COMPLETE  SPECIFICATI 

from  abroad,  it  is  no  answer  to  an  objection  that  the  spe* 
clfication  did  not  sufficiently  describe  the  .  u,  to  say 

that  the  patentee  has  stated  all  that  was  communicated  to 
him.  (Wfgmann  v.  Corcoran,  L.  R.  18  Ch.  D.  65.)  On  the 
otht  r  hand,  where  an  iim -ntion  nnumunu-atcd  from  abroad 
is  sufficiently  described  in  the  specification,  it  is  not  a  valid 
objection  to  the  patent  obtained  by  an  agent  in  this  country, 
that  the  foreign  inventor  is  possessed  of  information  which 
has  not  been  set  forth  in  the  specification.  (Plimpton  v. 
Malcolm*,!!,  L.  R.  8  Ch.  D.  851.) 

M u*t  fully  detcribc  the  mean*  of  en  rryimj  tin'  invention  int» 
effect. — Besides  furnishing  a  lucid  and  precise  definition 
of  the  invention,  the  inventor  must  set  forth  how  it  is  to  be 
carried  into  effect  so  that  the  promised  result  may  be  duly 
accomplished.  The  specification  must  show  plainly  how  the 
aim  and  object  of  the  invention  can  beach  i.vtd.iind  with  tlmt 
view  all  necessary  details,  directions,  and  explanations  must 
be  correctly  given ;  all  the  parts,  apparatus,  materials,  and 
ingredients  must  be  accurately  described ;  proportions,  quan- 
tities, times,  temperatures,  and  the  like,  so  far  as  they  are 
respectively  material,  must  be  stated,  precisely  if  it  can  be 
done,  approximately  if  that  only  is  possible ;  whilst  the 
needful  processes  and  operations  must  be  fully  communi- 
cated and  clearly  unfolded.  These  things  should  be  taken 
in  proper  order,  and  expressed  in  perspicuous  language. 

'  It  is  most  important '  (said  Mr.  Baron  Alderton,  in 
Morgan  v.  Seward,  1  W.  P.  C.  170)  'that  patentees  should 
be  taught  that  they  are  bound  to  set  out  fully  and  fairly 
what  their  invention  is.  ...  The  specification  ought  to 
contain  a  full  description  of  the  way  in  which  it  is  to  be 
done.  .  .  .  The  patentee  ought  to  state  in  his  specification 
the  precise  way  of  doing  it.  If  it  cannot  be  completely 
done  by  following  the  specification,  then  a  person  will  not 
infringe  the  patent  by  doing  it.' 

The  specification  ought  to  mention  everything  which  is 
essential  to  the  carrying  into  effect  of  the  invention.  In  a 
patent  for  trusses,  the  paten tee  omitted  to  state  that  the 
steel  of  which  they  were  made  was  to  be  tempered  with 


THE  COMPLETE  SPECIFICATION  115 

tallow,  and  Lord  Mansfield  held  it  void.  (Liardet  v.  John- 
son, I  W.  P.  C.  53.)  When  a  patent  was  granted  to  Dr. 
James  for  fever  powders,  he  stated  in  his  specification  the 
materials  of  which  they  were  composed,  but  omitted  to  de- 
scribe the  quantity  of  the  ingredients.  This  being  the  case, 
said  Lord  Mansfield,  he  never  durst  bring  an  action  for 
infringement,  and  it  was  certainly  wise  in  him  not  to  do  so, 
as  no  patent  could  stand  on  such  a  specification.  (1  W.  P.  C. 
54  ?i.)  The  specification  of  Neilson's  patent  omitted  all 
mention  of  water-tuyeres ;  if  the  apparatus  (said  Parke,  B.) 
would  not  be  beneficial  without  them,  then  it  is  of  no  use  to 
the  public  as  it  is  described  in  the  specification,  and  the 
specification  would  be  bad.  (Neilsonv. Harford,  1  W.  P.  C. 
317.)  When  a  patentee  prepared  the  specification  of  his 
invention  of  spinning  machinery,  he  said  nothing  as  to  the 
difference  in  the  velocity  of  certain  rollers.  Having  brought 
an  action  for  an  infringement,  and  gone  into  evidence  to 
show  what  his  invention  was,  Buller,  J.,  remarked,  '  The 
man  comes  to  give  an  account  of  the  invention,  and  says,  I 
had  calculated,  and  the  difference  of  the  velocity  was  to  be 
as  five  to  one.  Now  he  has  not  said  a  word  of  that  in  his 
specification.  In  that,  he  has  kept  back  the  knowledge  he 
had  as  to  the  size  of  the  rollers  and  their  velocity,  and  it  is 
left  to  people  to  find  it  out  as  chance  may  direct.'  The 
patent  was  accordingly  held  bad.  (Rex  v.  Arkwright, 
1  W.  P.  C.  70.)  Again,  under  a  patent  for  improvements  in 
steam-engines  and  paddle-wheels,  a  difference  which  had  to 
be  made  in  the  length  of  certain  rods  was  not  given  in  the 
specification,  and  it  was  attempted  to  explain  this  by  saying 
that  the  difference  in  the  length,  being  small,  would  not  be 
very  material.  '  But  the  whole  question'  (said  Alderson,  B.) 
f  is  small,  therefore  it  ought  to  have  been  specified ;  and  if 
it  could  not  be  ascertained  fully,  it  should  have  been  so 
stated.  .  .  .  The  small  adjustment  of  these  different  lengths 
may  have  been  made  for  the  purpose  of  making  the  machine 
work  more  smoothly;  if  so,  it  is  just  as  much  necessary  that 
it  should  be  stated  in  the  specification  as  that  the  tallow 
(referring  to  the  case  of  Liardet  v.  Johnson)  should  be 

I  2 


116  THE  COMPLETE  SPECIFICATION 

mentioned.'  (Moryan  v.  Setrnr.l,  1  W.  I*.  ('.  182.)  The 
drauin^  attached  to  tin-  s|xriticati(»n  tinder  a  patent  for 
improvements  in  lamps  <li<l  not  show,  and  the  specification 
itself  did  not  state,  wh<  n  the  air  was  to  be  admitted  in  the 
second  burner,  and  without  admitting  air  the  wick  would 
not  burn.  Jrx.«l,  M.  /,'.,  held  that  tin-  sp<  c  ilicatidi  \\-.\ 
sufficient;  and  to  the  argument  that  a  workman  would 
correct  the  drawing  by  putting  in  tin-  opening,  the  judge 
replied  that  uht  re  tin-  invention  is  of  a  trifling  nature,  and 
tin  whole  merit  very  small,  if  a  patentee  undt  r  takes  to  teach 
people  how  to  do  things  better,  he  must  fully  describe  his 
plan,  and  not  leave  anything  for  the  invi  ntimi  of  ot: 
«///// /.*  v.  Sn/'-tii  l.lnht'uiii  CumjMinit,  L.  R.  4  Ch.  D.  607.) 

A  patent  was  obtained  for  improvements  in  floating 
docks.  In  an  action  for  an  infringement  it  was  proved  that 
the  construction  of  floating  docks  was  not  new,  hut  the 
plaintiff  alleged  that  his  invention  consisted  in  the  applica- 
tion of  iron  so  as  to  form  airtight  and  watertight  chambers. 
Now  there  was  no  mention  of  iron  in  the  specification,  and 
it  was  held  both  by  the  judge  on  the  trial  and  by  the  Court 
of  Common  Pleas  that  the  plaintiff  had  not  duly  described 
tin-  nature  of  the  invention,  and  in  what  manner  it  was  to 
be  carried  out.  (Macktlcan  v.  Itennie,  18  C.  B.  N.  s.  52.) 

The  specification  under  a  patent  for  an  iim-ntion  for 
preserving  animal  substances  in  a  fresh  state  for  a  long 
time  stated  that  it  consisted  in  the  application  of  » •« -rtain 
solutions,  numbered  1,  2,  3,  and  4,  to  the  matters  int<  nd<  d 
to  be  preserved.  The  mode  of  applying  the  solutions  mini- 
1  2,  3,  and  4  was  set  forth,  but  nothing  was  said  as  to 
the  mode  of  applying  solution  No.  1.  It  was  held  l>oth  l>y 
the  Court  of  Session  in  Scotland,  and  by  the  House  of  Lords 
on  appeal,  that  the  patent  was  bad  on  account  of  the  want 
of  a  sufficient  description  of  the  manner  in  which  tin-  inven- 
tion was  to  be  performed,  (linilrii  v.  linbertun,  L.  R.  3  App. 
Cas.  1055.) 

The  plaintiffs  specification,  filed  in  1873,  contained  two 
claims ;  the  first  for  a  method  of  thickening  oils  for  lubri- 
cating purposes ;  the  second  for  combining  thickened  oils 


.THE  COMPLETE  SPECIFICATION  117 

with  mineral  oils.  The  patentee  described  his  method  of 
thickening,  but  not  the  process  of  mixing  the  oils,  nor  did 
he  state  any  proportions.  It  was  held  in  the  Court  of  Ses- 
sion, Scotland,  that  if  skill  were  required  to  make  the  oils 
combine  under  the  second  claim,  the  specification  was  de- 
fective;  because  the  method  of  carrying  out  the  invention 
had  not  been  shown ;  and  that  if  no  skill  were  required 
there  was  no  proper  subject  for  a  patent.  (Hutchison  v. 
Patullo,  5  E.  P.  C.  351.) 

Grave  doubts  were  entertained  by  the  Lords  Justices  in 
the  Court  of  Appeal  with  respect  to  the  sufficiency  of  a 
specification  which  described  an  hydraulic  machine,  adapted, 
according  to  the  evidence,  to  work  only  at  high  pressure, 
there  being  no  advantage  gained,  as  was  admitted,  in  work- 
ing it  at  low  pressure.  Now  the  patentee  had  not  set  forth 
this  important  fact  in  his  specification.  (Ellington  v.  Clark, 
5  E.  P.  C.  327.) 

"Where  a  specification  claimed  a  combination  of  three 
elements,  and  the  third  element  was  not  stated  or  explained, 
the  patent  was  held  invalid.  (Gaulard  d-  Gibbs'  Patent, 
5  E.  P.  C.  535.) 

Description  must  not  be  vague  and  general. — When  a  pa- 
tentee attempts  to  secure  a  right  of  an  extensive  nature, 
the  description  of  the  process  must  not  be  vague  and 
general.  Thus  in  Booth  v.  Kennard  (2  H.  &  N.  84),  an 
action  brought  for  the  infringement  of  a  patent  for  improve- 
ments in  the  manufacture  of  gas,  the  specification  was  held 
bad,  because  it  claimed  generally  the  exclusive  privilege  of 
making  oil  directly  from  oleaginous  seeds  ;  and,  instead  of 
describing  particularly  how  this  was  to  be  done,  only  stated 
ihat  the  mode  of  using  the  materials  might  be  '  the  same 
as  in  the  apparatus  used  in  the  ordinary  mode  of  making 
gas  from  coal.'  The  Court  deemed  such  a  description  too 
vague  and  general  when  coupled  with  a  sweeping  claim  like 
that  above  mentioned. 

However,  in  Edison  <&  Swan  United  Electric  Light  Co. 
v.  Woodhouse  (4  E.  P.  C.  105),  an  action  for  the  infringe- 
ment of  a  patent  for  an  electric  lamp,  it  was  contended  by 


118  THE  COMPLETE  SPECIFICATION 

the  defendant  that  the  specification  was  bad  on  accou 
vagueness,  since  showed  that  it  was  essential 

to  success  in  preparing  the  lamp  that  the  temperature 
should  be  gradually  increased,  and  this  was  not  stated. 
But,  said  /..  -/.  /•>//.  'if  the  language  of  a  specification  is 
clear  enough  to  guide  a  competent  workman  and  enahlc 
him  to  obtain  the  desired  result,  we  cannot  see  how  the 
Court  can  hold  the  language  insufficient  in  point  of  law. 
No  doubt  it  is  for  the  Court  and  not  for  a  workman  to  con- 
strut  tin  -]..  .-iiication,  but  if  a  workman  says  it  is  a  suffi- 
nYnt  guide  to  him,  and  the  Court  believes  him,  the  Court 
must  hold  that  as  regards  clearness  of  description  Un- 
ification is  in  point  of  law  sufficient.'  (See  ak< 

^ran  Co.  v.  7/..//<im/,  15  U.  P.  C.  243.) 

Must  precisely  describe  all  matrrinl*  ami  in>ir>'ilifnt«. — A 
specification,  in  describing  materials  and  ingredients  re- 
quired for  carrying  the  invention  into  effect,  must  not 
employ  general  terms  which  cover  what  is  unsuitable  as 
well  as  what  is  suitable.  The  public  has  a  right  to  look  for 
definiteness  and  precision  in  this  respect,  and  ought  not  to 
be  put  off  with  vagueness  and  loose  generalities.  Experi- 
ments, would  be  required  to  discover  which  one  of  the 
various  objects  included  under  the  general  term  is  suitable, 
and  that  task  the  law  declares  ought  not  to  be  imposed  upon 
the  public.  For  instance,  a  specification  stated  that/»«*i7 
*<itt  should  be  employed.  Now  there  are  various  kinds  of 
fossil  salt,  but  it  was  shown  that  the  only  kind  fit  for  the 
object  in  view  was  sal  ycm,  and  it  was,  therefore,  held  that 
the  specification  had  given  an  inadequate  explanation  of  the 
matter.  (Turner  v.  Winter,  1  W.  P.  C.  80.) 

The  specification  under  a  patent  for  certain  methods  of 
making  cements  described  a  method  of  making  cement 
from  gypsum,  in  the  course  of  which  an  alkali,  neutralised 
by  an  acid,  was  directed  to  be  used ;  sulphuric  acid  and 
potash  being  stated  to  be  the  best  acid  and  alkali  for  the 
purpose.  Another  method  for  making  cement  from  lime- 
stone and  chalk  was  then  described,  and  consisted  also  in 
the  use  of  an  alkali,  neutralised  by  an  acid.  An  action  was 


THE  COMPLETE  SPECIFICATION  119 

brought  for  an  infringement  of  this  patent.  The  infringe- 
ment complained  of  was  the  employment  of  borax  in  making 
cement,  borax  being  composed  of  an  acid  (boracic  acid)  and 
an  alkali  (soda).  Now  if  the  patentee  confined  himself  to 
sulphuric  acid  and  potash,  then  the  defendant  was  not 
liable,  seeing  that  he  had  used  neither ;  if  he  claimed  the 
use  of  all  acids  and  alkalies,  his  claim  was  bad,  because  it 
was  proved  that  there  were  some  acids  and  alkalies  which 
would  not  answer  the  purpose  ;  and  if  he  claimed  only  those 
acids  and  alkalies  which  were  proper  and  suitable,  he  was 
bound  to  state  in  the  specification  what  they  were,  otherwise 
experiments  would  be  necessary  to  discover  what  were  suit- 
able and  what  were  not.  (Stevens  v.  Keating,  2  W.  P.  C. 
194.)  See  also  Muntz  v.  Foster  (2  W.  P.  C.  109). 

Under  a  patent  for  improvements  on  preserving  animal 
substances  for  use  as  food,  the  specification  stated  that  the 
invention  consisted  of  '  the  use  of  the  alkaline  and  earthy 
sulphites.'  But  as  it  was  shown  that  some  of  the  earthy 
sulphites  are  poisonous,  and  that  some  of  the  alkaline  sul- 
phites possess  properties  which  render  them  unsuitable  for 
the  purpose  in  view,  it  was  held  that  the  claim  to  the  use 
of  *  the  alkaline  and  earthy  sulphites '  was  too  wide  and 
vague,  and  that  the  specification  ought  to  have  defined 
more  precisely  the  materials  to  be  employed.  (Bailey  v. 
Eoberton,  L.  E.  3  App.  Cas.  1078.) 

In  Weginann  v.  Corcoran  (L.  E.  13  Ch.  D.  63),  it  ap- 
peared that  the  plaintiff  had  obtained  a  patent  for  an  im- 
proved machine  or  apparatus  for  treating  or  preparing  meal. 
The  specification  stated  that  the  squeezing  rolls  of  the  im- 
proved machine  were  to  have  'a  surface  consisting  of  a 
material  containing  so  much  silica  as  not  to  colour  the  meal 
or  flour,'  and  the  patentee  preferred  to  make  them  of  '  iron 
coated  with  china,'  and  finely  turned  with  diamond  tools. 
It  was  shown  that  there  are  two  kinds  of  china— Oriental 
or  Chinese  china,  which  contains  73  per  cent,  of  silica,  and 
is  very  hard  ;  whilst  the  china  usually  made  in  this  country 
contains  only  about  40  per  cent,  of  silica,  and  is  much 
softer.  Now  the  first  kind  of  china  would  answer  the  pur- 


120  THE  COMPLETE  SPECIFICATION 

poee,  1'iit  the  second  would  not.  It  was  therefore  held  by 
the  Court  of  Appeal,  affirming  the  decision  of  the  Court 
below,  that  although  tin-  invention  was  useful  in  milling 
operations,  the  specification  was  ambiguous  and  inadequate, 
as  it  did  not  state  what  kind  of  ( •hinu  was  to  be  employed. 
Experiments  would  have  been  required  to  discover  a  suitable 
material  for  tin  apparatus. 

Pooley  took  out  a  patent  in  1874  for  improvemo 
the  manufacture  of  bread,  the  main  feature  of  which  was 
the  employment  of  a  mixture  of  wheat  flour  and  malt 
flour  in  given  proportions.  When  instructing  his  agents 
how  to  use  his  invention  the  patentee  sent  them  a  formula 
which  was  very  different  from  that  given  in  the  specification  : 
and  in  the  course  of  time  he  issued  other  formula,  all 
different  from  that  specified.  It  was  held  at  the  trial  of  an 
action  for  an  infringement  of  the  patent,  that  on  this  evi- 
dence the  specification  had  not  properly  set  forth  tin-  in- 
vention. The  directions  sent  out  to  the  agents  were  to 
enable  them  to  do  that  which,  according  to  their  testimony, 
they  could  not  do  from  the  specification.  (Pool  //«//», 

2  R.  P.  C.  167.) 

It  is  not  obligatory  on  a  patentee,  when  referring  to 
materials  and  ingredients  to  be  used  in  carrying  his  inven- 
tion into  effect,  to  enter  into  minute  details  as  to  such 
materials  and  ingredients,  if  they  are  known  in  the  shops, 
and  can  be  readily  purchased  under  the  names  which  he 
gives  them.  (M<i<-kintn*]t  \.  I-'.r,  rin;it'>n,  2  Carp.  Rep.  191.) 

The  names  of  articles  mentioned  in  a  specification  must 
be  taken  to  be  used  in  their  ordinary  commercial  sense. 
Thus,  a  direction  in  a  specification  to  use  dry  arsenic  acid 
in  the  manufacture  of  dyes  was  held  to  refer  to  the  ordinary 
arsenic  acid  of  commerce  (which  is  dry  to  the  touch,  although 
it  contains  water  in  combination),  not  to  anhydrous  arsenic 
acid,  which  could  not  be  commonly  bought  in  the  trade, 
and  which  would  not  answer  the  purpose.  (Simpson  v. 
Holliday,  20  Newt.  Lon.  J.  118;  5  N.  R.  840;  L.  R.  1 
H.  L.  C.  815.)  And  see  Sturtz  v.  De  la  Rue  (1  W.  P.  C. 
88  H.)  ;  Steven*  v.  Keating  (2  W.  P.  C.  183,  187) ;  Muntz  v. 


THE  COMPLETE  SPECIFICATION  121 

Foster  (2  W.  P.  C.  104) ;  Badische  Anilin  und  Soda  Fabrik 
v.  Levinstein,  House  of  Lords  (L.  R.  12  App.  C.  710; 
4E.  P.  C.  463). 

A  person  who  takes  out  a  patent  for  an  invention  con- 
sisting of  the  use  of  known  materials  in  new  proportions, 
though  bound  to  state  the  most  suitable  proportions  within 
his  knowledge,  is  not  bound  to  limit  his  claim  to  the  pre- 
cise proportions  recommended  by  him  in  his  specification. 
(The  Patent  Type  Founding  Company  v.  Richard,  Johns. 
881.) 

Whether  or  not  a  specification  describes  with  sufficient 
accuracy  the  material  out  of  which  an  article  is  to  be  made 
is  a  question  for  the  jury,  where  the  case  is  tried  before 
one.  (Bickford  v.  Skeives,  1  W.  P.  C.  214 ;  Derosne  v.  Fairie, 
1  W.  P.  C.  154;  Elliot  v.  Turner,  2  C.  B.  446;  Wattington 
v.  Dale,  7  Ex.  888.)  , 

Must  describe  the  best  method  of  operating. — A  patentee 
is  bound  to  describe  the  most  advantageous  method  within 
his  knowledge  for  carrying  his  invention  into  effect ;  and 
he  ought  to  put  the  public  in  possession  of  his  secret  in  as 
ample  and  beneficial  a  way  as  he  himself  uses  it.  In  Wood 
v.  Zimmer  (Holt,  N.  P.  57)  a  patent  for  a  method  of  making 
verdigris  was  contested.  It  seemed  that  verdigris  was  made 
by  the  process  set  forth  in  the  specification  ;  but  that  the 
patentee  was  in  t'he  habit  of  secretly  putting  aquafortis  into 
the  boiler.  The  copper,  forming  one  of  the  ingredients, 
was  thereby  more  rapidly  dissolved ;  but  the  verdigris  pro- 
duced was  neither  better  nor  cheaper  than  that  made 
according  to  the  specification.  Gibbs,  C.  J.,  considered, 
however,  that  this  was  a  prejudicial  concealment,  and  held 
the  patent  to  be  invalid. 

Letters  patent  were  obtained  for  a  mode  of  making  a 
medicine,  composed  of  three  salts,  commonly  sold  in  the 
shops  under  certain  well-known  names.  The  specification, 
instead  of  simply  mentioning  these  salts  by  their  names, 
described  the  processes  by  which  they  were  produced,  and 
then  pointed  out  the  proportions  in  which  the  salts  were 
to  be  combined  in  order  to  form  the  medicine.  The  methods 


\1'2  THE  COMPLETE  SPECIFICATION 

of  producing  the  separate  salts  were  not  essential  to  the 
combination,  and  formed  no  part  of  the  invention.  It  was 
IM  Id  at  ATI*I  J'rinx  that  the  specification  was  bad,  A< 
<  I.,  saying  that  it  is  the  duty  of  anyone  to  whom  a 
patent  is  granted  to  point  out  in  his  specification  the 
plainest  and  most  easy  way  of  producing  that  for  which  he 
claims  a  monopoly;  and  to  make  the  public  acquainted 
•with  the  mode  which  he  hiin^.lf  adopts.  If  a  person  would 
be  led  to  suppose  a  laborious  process  necessary  to  the  pro- 
duction of  any  one  of  the  ingredients,  when  in  fact  he 
might  go  to  a  chemist's  shop  and  buy  the  same  thing  as 
a  separate  simple  part  of  the  compound,  the  public  are 
misled.  (S<ii;,ni  v.  1'ricr,  1  Ry.  and  Moo.  1 ;  1  W.  P.  C. 
88.) 

There  are  many  other  cases  which  show  that  if  the 
patentee  knows  of  any  circumstance  which  conduces  to  the 
advantage  of  his  manufacture  or  process,  he  is  bound  to 
mention  it  in  his  specification.  Nothing  of  importance  can 
be  withheld  or  concealed  without  danger  to  the  patent.  In 
Turner  v.  Wint.-r  (1  W.  P.  C.  81),  Butler,  J.,  said,  that  if 
the  patentee  make  the  article  for  which  the  patent  is 
granted  of  cheaper  materials  than  those  which  he  has 
enumerated,  although  the  latter  may  answer  the  purpose 
equally  well,  the  patent  is  void,  because  he  does  not  put  the 
public  in  possession  of  his  invention,  or  enable  them  to 
derive  the  same  benefit  as  he  himself  does. 

If  a  patentee  is  acquainted  with  any  particular  mode  by 
which  his  invention  may  be  most  conveniently  carried  into 
effect,  he  ought  to  state  it  in  his  specification.  Per  Aldtr$ont 
J5.,  in  Mnnian  v.  Swtrd  (1  W.  P.  C.  170). 

But  a  patentee  is  not  bound  to  explain  which  of  several 
methods,  all  more  or  less  possible,  is  the  most  or  the  least 
advantageous  ;  yet  all  the  methods  described  by  him  must 
be  more  or  less  possible,  and  he  is  bound  to  state  what 
methods  are  possible,  and  to  avoid  stating  as  possible  the 
methods,  if  any,  which  are  not.  (Badisclie  Anilin  und  Soda 
Fabrik  v.  Levinstein,  L.  R.  12  App.  C.  710 ;  4  R.  P.  C.  449 ; 
Kurtz  v.  Spence,  5  R.  P.  C.  183.) 


THE  COMPLETE  SPECIFICATION  123 

In  Sturtz  v.  De  la  Rue  (I  W.  P.  C.  83),  it  appeared  that 
the  patentee  had  mentioned  in  his  specification  a  certain 
substance,  under  the  name  of  the  finest  and  purest  chemical 
white  lead,  which  was  to  be  used  in  giving  paper  a  glaze, 
preparatory  to  its  receiving  an  impression  from  an  engraved 
plate.  He  himself  imported  from  Germany,  for  this  purpose, 
a  preparation  called  Kremnitz  ichite ;  but  he  said  nothing 
about  this  in  his  specification.  It  was  shown  that  there 
was  no  article  known  in  the  chemists'  shops  in  London 
which  answered  to  the  patentee's  name,  and  that  the  purest 
white  lead  which  could  be  purchased  there  did  not  answer 
the  purpose.  It  was  held,  on  these  facts,  that  the  patentee 
had  not  made  that  full  disclosure  which  he  ought  to  have 
made  ;  and  his  patent  was  adjudged  void.  *  A  man  has  no 
right '  (said  Pollock,  C.  B.,  in  his  address  to  the  jury  on 
the  trial  of  Tetley  v.  Easton,  Macr.  P.  C.  76)  '  to  patent  a 
principle,  and  then  to  give  the  public  the  humblest  instru- 
ment that  can  be  made  from  his  principle,  and  reserve  to 
himself  all  the  better  part  of  it.'  (See  also  Derosne  v.  Fairie, 
1  W.  P.  C.  158.)  In  Walton  v.  Bateman  (1  W.  P.  C.  622), 
Cresswell,  J.,  laid  down  this  rule : — If  a  man  knows  a  better 
mode  than  that  which  he  states  to  the  public,  his  patent 
will  be  vitiated.  And  in  Heath  v.  Unwin  (2  W.  P.  C.  243), 
Coleridge,  J.,  said,  '  If  the  inventor  of  an  alleged  discovery, 
knowing  of  two  equivalent  agents  for  effecting  the  end, 
could  by  the  disclosure  of  one  preclude  the  public  from  the 
other,  he  might  for  his  own  profit  force  upon  the  public 
an  expensive  and  difficult  process,  keeping  back  the  simple 
and  cheap  one,  which  would  be  directly  contrary  to  the 
good  faith  required  from  every  patentee  in  his  communica- 
tion with  the  public.' 

In  Neilson  v.  Harford  (1  W.  P.  C.  321)  the  judge  told 
the  jury  that  if  the  patentee  believed  that  certain  internal 
partitions  in  the  hot-blast  apparatus  were  useful,  the  patent 
would  be  void,  since  he  had  omitted  to  say  anything  about 
them  in  the  specification. 

Must  communicate  the  latest  information. — It  frequently 
occurs  that  in  the  interval  between  the  application  and  the 


124  THE  COMPLETE  SPECIFICATION 

ng  of  the  complete  specification,  the  inventor  discovers 
ih.i:  the  original  im.-nti.«n  is  capable  of  material  improve- 
in-  nt.     Tin-  inti -m-ning  period  is  allowed  him  for  the  very 
purpose  of  improving  the  details  of  his  invention;  ami  if 
In  f.iils  to  communicate  to  the  public  the  best  information 
he  possesses  at  the  time  of  lodging  the  complete  specifica- 
tion, the  patent  will  be  held  void.     In  Cro»»lf;i  v.  / 
il  \V.  P.  C.  117)  it  was  objected  that  the  patentee  had 
added  something  to  the  invention  as  finally  specified,  hut, 
said  /)«»///••//,  •/.,  '  I  think  that  if  In-tween  taking  out  the 
I'M*,  nt  and  filing  the  specification,  the  inventor  makes  a 
discovery  which  will  enable  it  better  to  effectuate  the  thing 
for  which  the  patent  was  obtained,  not  only  is  he  at  liberty 
to  introduce  them  into  his  patent,  hut  it  is  his  bounden 
duty  so  to  do,  and  it  is  not  sufficient  for  him  to  communi- 
cate to  the  public  the  knowledge  he  has  obtained  before  the 
specification.'    And  in  ffiNMhMfliY.SMfMi  <  1  K.  I'.C.  1 '••'>. 
/..  •/.  Cottnn  said  that  an  inventor  is  bound  to  give  the 
public  in  his  complete  specification  the  benefit  of  what  he 
has  discovered,  after  filing  his  provisional  specification,  in 
regard  to  the  mode  of  carrying  the  invention  into  effect, 
although  there  may  be  improvement  and  even  invention 
which  was  not  known  to  him   at  the  time.      (See  also 
Cnunptnn  v.  Pat' tit*  Inf:^ni>-iit  Co.,  5  R.  P.  C.  897,  and  the 
section  on  the  relation  of  the  complete  to  the  provisional 
specification,  ante,  p.  107.) 

It  should,  however,  be  kept  in  mind  that  the  additions 
must  strictly  relate  to  the  invention  as  it  stood  at  the  date 
of  the  application.  The  introduction  of  new  heads  into  the 
specification  or  an  extension  of  the  subject-matter  of  the 
original  invention  will  not  be  permitted.  (Oro**/-  //  v.  / 
Macr.  P.  C.  240;  liailcy  v.  Kolterton,  L.  R.  8  App.  Ca. 
1055.)  '  The  complete  specification,'  said  Lorrf  Chdmsford 
in  Pi-nn  v.  ItiMiii  (L.  R.  2  Ch.  D.  58),  'is  in  a  sense  supple- 
mental to  the  provisional  specification,  not  going  beyond 
nor  varying  from  it  as  to  the  nature  of  the  invention,  but 
conveying  additional  information  which  may  have  been 
acquired  during  the  currency  of  the  provisional  specification 


THE  COMPLETE  SPECIFICATION  125 

as  to  the  manner  in  which  the  invention  is  to  be  per- 
formed.' 

But  need  not  set  forth  every  application. — An  inventor 
who  obtains  a  patent  for  the  useful  application  of  a  prin- 
ciple is  not  to  be  called  on  to  set  forth  every  mode  of 
applying  it.  It  is  sufficient  if  he  shows  some  of  its  useful 
applications,  those  applications  being  the  best  illustrations 
of  the  invention  known  to  him.  See  what  fell  from  Lord 
Abinger  in  Neilson  v.  Harford  (1  W.  P.  C.  356),  and  see 
Badisclie  Anilin  und  Soda  Fabrik  v.  Levinstein  (L.  E.  24  Ch. 
D.  176  ;  S.  C.  in  H.  of  L.  4  E.  P.  C.  466).  But  it  must  be 
borne  in  mind  that  a  patentee  cannot,  by  making  a  general 
claim,  cover  improvements  and  applications  of  which  he 
was  ignorant  at  the  date  of  his  specification.  (Tctley  v. 
Easton,  Macr.  P.  C.  77.) 

Where  a  patentee  by  his  specification  under  a  patent 
for  the  production  of  certain  aniline  colouring  matters  had 
claimed  all  the  shades  from  red  to  brown  producible  by  the 
various  processes  described  in  the  specification,  whilst  only 
one  shade  was  known  to  have  any  present  commercial 
value,  it  was  held  by  the  court  of  first  instance  and  after- 
wards by  the  House  of  Lords  that  he  was  not  bound  to  in- 
dicate the  respective  advantages  for  dyeing  purposes  of  the 
different  shades  of  colour  produced  or  to  select  the  most 
valuable  shade  and  give  specific  directions  how  to  produce 
it.  (Badische  Anilin  und  Soda  Fabrik  v.  Levinstein,  L.  E. 
12  App.  C.  710 ;  4  E.  P.  C.  464.) 

Must  be  intelligible  to  ivorkmcn  of  ordinary  skill. — The 
specification  is  to  be  considered  as  addressed  to  persons  of 
ordinary  skill  and  ability,  acquainted  with  the  particular 
subject.  It  must  be  intelligible  to  such  persons,  and  the 
directions  must  be  such  that,  by  pursuing  them,  they  would 
produce  without  difficulty  the  result  which  the  patentee 
describes.  (Tindal,  C.  J.,  in  Gibson  v.  Brand,  1  W.  P.  C. 
631 ;  Beard  v.  Egerton,  8  C.  B.  165.)  Lyndhurst,  L.  C., 
said,  in  Stiirtz  v.  De  la  Rue  (I  W.  P.  C.  83  w.),  that  the 
specification  must  describe  the  invention  in  such  a  way  that 
a  person  of  ordinary  skill  in  the  trade  'should  be  able  to 


THE  COMPLETE  SPECIFICATION 

carry  on  the  process.     And  Lord  Demn<in,  in  liickjord  v. 
Skru-ft  (1  W.  P.  C.  218),  said  that  the  specification  is  ad- 

ilr»ss,,l.  nnt  to  IH  rsons  i-ntir.lv  i^n«.rant  nf  tin-  Mil.jrct- 
mutttT,  but  to  artists  of  competent  skill  in  the  brunch  of 
manufactures  to  which  it  relates.  The  persons  whom  the 
spir  itu  ;ition  ought  to  be  designed  for  are  persons  of  ordinary 
skill  ami  al-ilit  y  ;  not  those  of  special  and  unusual  prn< 
knowledge,  and  capacity — not  persons  at  the  head  of  their 
profession. 

A  specification  ought  to  be  so  framed  as  to  be  und<  i  - 
stood  by  the  ordinary  workman  using  that  amount  of  skill 
and  intelligence  which  is  fairly  to  be  expected  from  him— 
not  a  careless  man,  but  a  careful  man  ;  though  not  possess- 
ing that  great  scii-ntilic  knowledge  or  power  of  invention 
which  would  enable  him  by  himself,  unaided,  to  supplement 
a  defective  or  correct  an  erroneous  description.  Per  Jewl, 
M.  /,'.,  in  1'Hmpton  v.  M,il<;,lmmm  (L.  R.  8  Ch.  D.  568). 
See  also  Neilson  v.  Harford  (1  W.  P.  C.  871) ;  lluutrlnll  <  'o. 
v.  NriUo*  (I  W.  P.  C.  692);  Kdisnn  ,(•  Smm  Co.  \.  If 
house,  2nd  action  (4  R.  P.  C.  108);  .W..x,7.-//  v.  rirtnrin 
Rubber  Co.  (4  R.  P.  C.  242) ;  Bray  \.  ti«r<ln,-r  (1.  K.  P.  C. 
406). 

\\  li.-re  the  specification  under  a  patent  for  a  chemical 
operation  was  concerned,  Mr.  Justice  Maule  said,  '  A  com- 
petent workman  must  be  taken  to  know  the  known  proper- 
ties of  iodine,  silver,  and  nitric  acid,  or  else  the  specification 
should  have  included  a  statement  of  the  properties  of  each 
of  these  substances.'  (Beanl  v.  7.>  it<>n,  8  C.  B.  165.) 

But  when  placed  in  the  hands  of  a  person  of  ordinary 
skill  and  intelligence,  '  possessed  of  knowledge  in  the  par- 
ticular industry*  (Badische  Anilin  mul  .sW</  l',ilrik  v. 
;8tdnt  L.  R.  12  App.  C.  710;  4  R.  P.  C.  463), 
the  specification  must  be  sufficient  to  show  him  how 
the  invention  is  to  be  carried  into  effect  without  fur- 
ther assistance,  and  without  needing  large  corrections 
or  fresh  invention  on  his  part.  There  must  be  no  ne- 
cessity to  try  elaborate  experiments  in  order  to  ascer- 
tain the  meaning  of  the  instrument  or  to  accomplish 


THE  COMPLETE  SPECIFICATION  127 

the  end  promised  by  the  patentee.  In  Hex  v.  Arkwright 
(1  W.  P.  C.  66),  Buller,  B.,  said  that  the  specification  must 
be  such  that  mechanical  men  of  common  understanding 
(the  validity  of  a  patent  for  a  machine  being  in  dispute) 
must  be  able  to  make  the  machine  by  following  its  direc- 
tions, without  any  new  additions  or  inventions  of  their 
own.  In  the  luminous  address  of  Mr.  Baron  Alderson  to 
the  jury  on  the  trial  of  the  case  of  Morgan  v.  Seward 
(I  W.  P.  C.  170)  he  said  that  a  specification  ought  to  be 
framed  so  as  not  to  call  on  a  person  to  have  recourse  to 
more  than  those  ordinary  means  of  knowledge — not  inven- 
tion— which  a  workman  of  competent  skill  in  his  art  and 
trade  may  be  presumed  to  have.  You  may  call  upon  him 
to  exercise  all  the  actual  existing  knowledge  common  to  the 
trade ;  but  you  cannot  call  upon  him  to  exercise  anything 
more.  You  have  no  right  to  call  upon  him  to  tax  his 
ingenuity  or  invention.  .  .  .  The  specification  must  not 
merely  suggest  something  that  will  set  the  mind  of  an 
ingenious  man  at  work,  but  it  must  actually  and  plainly 
set  forth  what  the  invention  is,  and  how  it  is  to  be  carried 
into  effect,  so  as  to  save  a  party  the  trouble  of  making  ex- 
periments and  trials.  And  Parke,  B.,  in  Neilson  v.  Harford 
(1  W.  P.  C.  371),  said  that,  to  be  valid,  a  specification 
should  be  such  as,  if  fairly  followed  out  by  a  competent 
workman,  without  addition  or  invention,  would  produce 
the  machine  for  which  the  patent  is  taken  out.  It  had 
been  previously  laid  down,  in  Rex  v.  Wheeler  (2  B.  &  Aid. 
349),  that  a  specification  which  casts  upon  the  public  the 
expense  and  labour  of  experiments  and  trial  is  undoubtedly 
bad.  It  would,  however,  seem  that  if  any  degree  of  benefit 
can  be  produced  by  complying  with  the  directions  of  the 
specification,  and  without  having  recourse  to  experiments, 
that  would  be  sufficient  to  save  the  patent ;  it  is  not  neces- 
sary that  the  maximum  degree  of  benefit  should  be  produced. 
(Neilsoris  Patent,  1  W.  P.  C.  318,  and  see  Otto  v.  Linford, 
46  L.  T.  N.  s.  39.)  In  #n  action  for  infringing  a  patent  for 
an  improved  mode  of  paving  streets  with  blocks,  so  shaped 
that  each  side  of  a  block  was  bevelled  both  inwards  and 


11>H  THE  COMPLETE  SPECIFICATION 

outwards,  it  was  objected  by  the  defendant  that  the  specifi- 
>n  gave  no  direction  as  to  the  angle  at  \\hii-h  the  bevels 
were  to  be  made.  The  judge  who  tri«d  the  case  (Lord 
Alnnijer)  told  tin- jury  that  if  any  angle  would  be  of  some 
use,  the  specification  was  good ;  but  if  some  particular 
angle  was  essential,  tin  n,  us  tin-  specification  1<  ft  that  to 
be  discovered  by  experiment,  it  was  deficient  and  bad. 

(Uir;,,i/;,,/ni  V.  Unlit,',  2  W.  P.  C.  129.)  JJllt  Mr.  -1 
/>'<////•'/  suiil  (in  the  case  of  C'r<>ni]>ti>ti  \.  //>//.-/*..»,  1  < 
Hep.  462)  that  a  patentee,  knowing  that  given  maU-ri;ils 
will  not  answer  the  purpose,  is  bound  so  to  word  his  specifi- 
cation as  to  prevent  others  from  trying  experiments  on  that 
\\hirh  lie  knows  will  not  answer.  In  this  case  a  patent  for 
an  improved  method  of  dyeing  and  finishing  paper  came 
into  question ;  the  specification  described  the  paper  as  being 
conducted  to  a  heated  cylinder  by  means  of  cloth,  'which 
cloth  may  be  made  of  any  suitable  material,  but  I  prefer  it 
to  be  made  of  linen  warp  and  woollen  weft.'  Now  the 
patentee  had  ascertained  from  repeated  trials  that  no  other 
substance  would  answer  the  purpose.  It  was  held  that  the 
public  had  not  the  full  benefit  of  the  inventor's  discovery, 
and  persons  misled  by  the  specification  might  be  iml 
to  make  experiments  which  the  patentee  knew  would  fail. 
1 1  \V.  P.  C.  88.)  This,  however,  must  be  considered  an 
t  \trtmecase. 

In  connection  with  this  subject  the  following  observa- 
tions of  Lord  U'l-stliui-y,  C.,  are  worthy  of  attention:— 
4  When  it  is  stated  that  an  error  in  a  specification,  which 
any  workman  of  ordinary  skill  and  experience  would  per- 
ceive and  correct  will  not  vitiate  a  patent,  it  must  be  un- 
derstood of  errors  which  appear  on  the  face  of  the  8] 
fication,  or  the  drawings  it  refers  to,  or  which  would  be  at 
once  discovered  and  corrected  in  following  out  the  instruc- 
tions given  for  any  process  or  manufacture;  and  the 
reason  is  because  such  errors  cannot  possibly  mislead. 
But  the  proposition  is  not  a  correct  statement  of  the  law 
if  applied  to  errors  which  are  discoverable  only  by  experi- 
ment and  further  inquiry.  Neither  is  the  proposition  true 


THE  COMPLETE  SPECIFICATION  129 

of  an  erroneous  statement  in  a  specification  amounting  to 
a  false  suggestion,  even  though  the  error  would  be  at  once 
observed  by  a  workman  possessed  of  ordinary  knowledge 
of  the  subject.  For  example,  if  a  specification  describes 
several  processes  or  several  combinations  of  machinery, 
and  affirms  that  such  will  produce  a  certain  result  which  is 
the  object  of  the  patent,  and  some  one  of  the  processes  or 
combinations  is  wholly  ineffectual  and  useless,  the  patent 
will  be  bad,  although  the  mistake  committed  by  the  patentee 
may  be  such  as  would  at  once  be  observed  by  an  ordinary 
workman.  (Simpson  v.  Holliday,  13  W.  R.  577.) 

But  when  in  the  case  of  the  Edison  &  Swan  Co.  v. 
Holland  (6  E.  P.  C.  277)  it  was  objected  in  the  Court  of 
Appeal  that  the  specification  did  not  sufficiently  show  how 
the  invention  was  to  be  carried  into  effect,  L.  J.  Cotton  said, 
'  It  is  necessary  that  this  should  be  done  so  as  to  be  intel- 
ligible, and  to  enable  the  thing  to  be  made  without  further 
invention — not,  as  was  pressed  upon  us,  by  an  ordinary 
workman,  but  by  a  person  described  by  Lord  Ellcnborough 
in  Huddart  v.  Grimsliaw  (1  W.  P.  C.  85-7)  as  a  person 
skilled  in  the  particular  kind  of  work,  or,  as  said  by  Lord 
Lougliborough  in  Arkwright  v.  Nightingale  (1  W.  P.  C.  60), 
a  person  conversant  in  the  subject.  But  in  my  opinion  it 
is  not  necessary  that  such  a  person  should  be  able  to  do  the 
work  without  any  trial  or  experiment  which,  when  it  is  new 
or  especially  delicate,  may  frequently  be  necessary  however 
clear  the  description  may  be.' 

In  the  case  of  British  Dynamite  Company  v.  Krebs 
(Goodeve's  Cases,  p.  88)  the  House  of  Lords  reversed  the 
decision  of  the  Lords  Justices  of  Appeal  on  the  ground  that 
the  description  of  the  mode  of  manufacture  as  set  out  in 
the  specification  had  been  conclusively  proved  to  be  suffi- 
cient for  all  practical  purposes.  The  four  law  lords  were 
unanimously  of  opinion  that  since  it  was  shown  in  evidence 
that  the  patented  article  had  been  made  by  following  the 
instructions  of  the  specification,  the  Judges  of  the  Court  of 
Appeal  ought  not  to  have  disregarded  this,  nor  to  have 
relied  upon  their  own  opinions  that  they,  persons  practically 


130  THE  COMPLETE  SPECIFICATION 

unacquainted  with  tho  subject,  would  not  have  been  able  to 
manufacture  the  article  without  more  instructions  than  the 
specification  contained. 

It  would  seem  from  ('n>*$lrii  v.  J  18  C.  &  P.  51 

that  in  construing  a  specification,  the  state  of  thepartit -uliir 
manufacture  at  the  date  of  the  patent  must  be  kept  in  \ 
In  this  case,  in  describing  a  gas  apparatus,  no  direct: 

#ven  as  to  a  condenser  ;  but  since  a  workman  capable 
of  constructing  a  gas  apparatus  knew  that  he  would  have  to 
put  it  in,  the  specification  was  IK  Id  suflirn  nt.     The  pit 
in  /;//**•//  v.  <  1  W.  P.  C.  459)  was  for  a  method  of 

manufacturing  iron  tubes  without  the  use  of  a  mandril. 
The  specification  gave  no  directions  as  to  leaving  out  th«- 
mandrel ;  but  it  was  held  that  an  intelligent  workman  would 
sufficiently  understand,  from  the  purport  of  the  specifica- 
tion, that  a  mandrel  was  not  to  be  used.  So,  in  Beard  v. 
•»n  (8  C.  B.  R.  165),  it  was  held  that  a  compel,  i it 
operator  would  perceive,  on  perusing  the  whole  specification, 
that  it  would  not  be  necessary  to  interpose  an  operation  at 
a  certain  stage  in  the  process  of  daguerreotyping. 

Again,  in  Otto  v.  Lin/»nl  (40  L.  T.  N.  s.  89)  the  specifi- 
cation under  a  patent  for  gas  motor  engines  did  not  state 
the  proportion  of  atmospheric  air  to  be  let  into  the  chamber 
where  the  inflammable  gas  was  fired  with  the  view  of  pro- 
ducing a  gradual  in  place  of  an  explosive  ignition.  Never- 
theless it  was  held  that  as  exact  proportions  were  not  re- 
quired to  be  mentioned,  and  as  there  was  enough  informa- 
tion in  the  specification  to  enable  a  maker  of  machinery  to 
construct  a  working  engine  without  exercising  his  inventive 
powers,  the  specification  was  sufficient. 

It  sometimes  occurs  that  the  drawing  attached  to  the 
specification  is  erroneous  in  some  particular,  so  that  if  an 
attempt  were  made  to  construct  the  machine  by  the  draw- 
ing it  could  not  be  done,  or  if  made  it  would  not  work.  If, 
however,  the  text  has  correctly  described  the  construction, 
or  if  the  error  is  of  a  kind  which  an  ordinary  workman 
would  easily  perceive  and  rectify,  requiring  not  experiments, 
but  merely  regulation,  then  the  error  in  the  figure  will  be 


THE  COMPLETE  SPECIFICATION  131 

disregarded,  and  will  not  be  held  to  vitiate  the   patent. 
(Otto  v.  Linford,  46  L.  T.  N.  s.  35.) 

Combinations. — It  has  been  already  stated  (Chap.  II.) 
that  a  number  of  well-known  things,  such  as  implements, 
machines,  or  parts  of  machines,  may  be  combined  so  as  to 
form  a  new  and  useful  instrument  or  machine ;  and  a  patent 
obtained  for  such  combination  will  be  valid,  care  being 
taken  that  the  specification  does  not  claim  the  old  parts  as 
well  as  the  novel  combination.  The  combination  may  also 
comprise  additions  of  a  novel  character  along  with  old  parts. 

The  treatment  of  a  combination  in  a  specification  ought 
to  have  reference  to  the  facts  of  the  case  and  to  the  in- 
ventor's intentions  in  regard  to  what  he  wishes  to  secure 
by  the  patent.  If  he  desires  to  protect  a  simple  combina- 
tion and  nothing  more,  it  is  not  necessary  that  he  should 
distinguish  old  parts  from  new  parts.  It  may  be  that  all 
the  parts  are  old,  in  which  case  he  can  only  lay  claim  to 
their  combination  as  being  a  new  and  useful  invention. 
But  it  often  happens  that  some  of  the  constituent  parts  of 
the  combination  are  also  new  and  useful  inventions.  In 
such  a  case  he  has  a  right  to  protect  them,  but  if  he  seeks 
to  do  so  they  ought  to  be  specially  pointed  out,  fully 
described,  and  expressly  claimed.  (See  the  section  on  the 
Claims.) 

In  the  case  of  Foxwell  v.  Bostock  (4  De  G.  J.  and  S. 
298)  Lord  Wesibury,  C.,  laid  down  the  rule  to  be  that  in  a 
patent  for  an  improved  arrangement  or  new  combination 
of  machinery,  the  specification  must  describe  the  improve- 
ment and  define  the  novelty,  otherwise  and  in  a  more 
specific  form  than  by  the  general  description  of  the  entire 
machine.  '  On  both  principle  and  authority  it  is  most  neces- 
sary that  the  specification  should  ascertain  the  improve- 
ment, when  the  patent  is  for  an  improved,  that  is,  for  a 
new  combination.  At  the  date  of  this  patent  many  combi- 
nations of  machinery,  or,  in  other  words,  many  machines 
for  sewing  or  stitching  by  a  needle  and  shuttle,  were  known 
and  used.  If  in  that  state  of  things  a  patent  is  taken  out 
for  an  improved  arrangement  or  combination,  the  patentee 


THE  COMPLETE  SPECIFICATION 

is  bound  to  show  in  what  the  improvement  consists,  and 
how  it  is  to  be  effected.  But  this  obligation  is  not  dio- 
( •! uirged  by  a  description  of  the  entire  machine  which 
embodies  the  improvement,  l>ut  which  description  does  not 
distinguish  the  improvement ;  and  tin -reby  r» -nd»  r-  it  nn- 

'Verable,  except  ujwui  a  minute  comparison  an«l  c..lla- 
tion  of  all  c\i>tin^  combinations  \\ith  the  new  com  bin 
that  is  claimed.    A  specification  so  framed  has  the  effect  of 
concealing  nither  than  of  disclosing  tin-  invention.' 
plaintiffs  counsel  stated  that  th.   improvement  consist* 
an  arrangement  of  three  cams  on  one  shaft,  by  ti 
action  of  which  the  three  principal  mov<  -ments  in  a  needle 
and  shuttle  machine  were  effected.    The  plaintiffs  evidence 
went  to  show  that  this  arrangement  formed  the  n<>. 
and  utility  of  the  machine.     '  ]>ut  this  clear  and  simple 
statement  is  not  to  be  found  anywhere  in  the  specification. 
It  is  true  that  the  cams  and  shafts  are  descried  indiscrimi- 

!y  with  the  rest  of  the  machine  in  the  specification,  but 
there  is  nothing  to  indicate  that  it  is  this  addition  which 
constitutes  the  improved  arrangement  or  the  new  combina- 
tion.'    The  specification  was  therefore  held  to  be  < 
and  the  patent  invalid. 

Lord  Westbury's    language  in    /•'.,./-»,//  \.   /;  •  •     /.   has 

11  rise  to  much  comment  in  later  cases,  and  the  deci- 
have  been  conflicting  ;  but  the  Courts  now  refuse  to  under- 
stand it  as  deciding  that  where  a  combination  is  alone 
claimed  it  is  necessary  to  distinguish  the  new  par;>  from 
the  old.  It  is  now  firmly  establi.-hed  that  where  the  only 
invention  sought  to  be  protected  by  the  patent  is  the  com- 
bination, and  that  is  properly  set  forth,  it  is  sufficiently 
described  without  separating  new  parts  from  old.  I'nder 
the  circumstances  supposed,  it  can  be  of  no  moment,  so  far 
as  the  point  before  us  is  concerned,  whether  the  parts  are 
all  old  or  partly  old  and  partly  new,  and  therefore  ;t 
-cription  of  the  parts  and  of  the  manner  of  arranging  them 
into  a  working  whole,  followed  by  a  claim  restricted  to 
the  combination,  will  be  a  sufficient  description  of  the 
invention. 


THE  COMPLETE  SPECIFICATION  133 

Thus  in  Harrison  v.  The  Anderston  Foundry  Co.  (L.  E. 
1  App.  C.  574)  it  was  objected  to  the  patentee's  claim  for  a 
combination  that  he  had  not  shown  what  was  the  novelty 
of  the  invention  as  he  ought  to  have  done  according  to  the 
case  of  Fox  well  v.  Bostock ;  but  Lord  Cairns,  C.,  in  giving 
judgment  in  the  House  of  Lords  said  : — '  If  there  is  a 
patent  for  a  combination,  the  combination  itself  is  ex 
necessitate  the  novelty ;  and  the  combination  is  also  the 
merit,  if  it  be  a  merit,  which  remains  to  be  proved,  by 
evidence.  So  also  with  regard  to  the  discrimination  between 
what  is  new  and  what  is  old.  If  it  is  clear  that  the  claim 
is  for  a  combination  and  nothing  but  a  combination,  there 
is  no  infringement  unless  the  whole  combination  is  used, 
and  it  is  in  that  way  immaterial  whether  any  and  which 
of  the  parts  are  new.' 

When  the  case  of  Moore  v.  Bennett  (1  E.  P.  C.  142)  was 
taken  to  the  House  of  Lords,  Lord  Sclborne,  C.,  and  two 
other  law  lords  overruled  the  unanimous  decision  of  the 
three  Lords  Justices  in  the  Court  of  Appeal  (which  had 
followed  Foxwell  v.  Bostock  too  literally),  and  laid  down  the 
law  to  be  that  where  the  claim  is  for  a  new  combination 
and  not  for  particular  subordinate  things  included  in  that 
combination,  and  where  the  manner  of  arriving  at  it  and 
working  it,  and  the  purpose  for  which  it  is  useful,  are  all 
sufficiently  described  in  the  specification,  so  that  anyone 
acquainted  with  the  subject  will  know  in  what  respect  it 
differs  from  the  things  that  have  gone  before,  it  is  unneces- 
sary to  go  on  to  specify  the  subordinate  parts  of  it  as 
constituting  new  elements  and  a  new  thing,  if  a  claim  to 
subordinate  parts  as  distinct  from  the  entire  combination 
is  not  intended  to  be  made. 

'  When  a  combination  and  nothing  more  is  claimed, 
the  combination  being  a  novelty,  it  is  immaterial  that  the 
patentee  should  point  out  how  far  he  claims  for  particular 
portions  which  go  to  make  up  the  combination.  Those 
portions  are  not  his  claim,  but  it  is  the  putting  them 
together  and  combining  them  that  constitutes  his  claim. 
That  seems  to  me  to  be  the  true  law  as  laid  down  in 


li.l  TilE  COMPLETE  SPECIFICATION 


v.  The  Andertton  Foundry  Co.,  without  a  refer- 
ence to  which  case  Foxwtll  v.  /  ought  not  to  be  read  ; 

because  it  is  possible  to  misread  /•'••/"•//  k  unless 

yon  correct  your  impression  of  it  afterwards  by  the  judg- 
ment of  the  House  of  Lords  in  Harriton  v.  The  Andertton 
I-'iinndniCo.'  (Per  /,.././.'••./••//  in  /'<  »'«,  Court 

of  Appeal,  4  R.  P.  C.  858.  See  also  clnrl  v.  Adie,  L.  i;. 
•2  A  pp.  C.  828;  Wtitlitnj  v.  .sVt-iv;i,  8  R.  P.  C.  87  ;  Kaye  v. 
Chtll,  5R.  P.C.  649.) 

When,  however,  an  inventor's  improvement  of  a  com- 
plicated machine  bears  but  a  small  proportion  to  the  whole 
machine,  it  is  highly  desirable,  if  not  imperative,  thnt,  if 
he  ventures  to  claim  the  entire  improved  machine,  h.- 
should  not  do  so  without  distinctly  pointing  out  the  small 
addition  or  alteration  which  constitutes  the  improvement. 
In  such  a  case  Lord  Westbury's  quoted  words  may  well  be 
held  to  apply.  In  Harrison  v.  The  Anderston  Foundry  Co. 
Lord  Hatherley  said  in  substance  that  it  is  not  competent 
to  a  man  to  take  a  well-known  existing  machine  and, 
having  made  some  small  improvement,  to  place  that  before 
the  public,  without  explaining  the  improvement.  '  You  must 
state  clearly  and  distinctly  what  it  is  in  which  you  say  you 
have  made  an  improvement.  To  use  an  illustration  which 
was  adopted  I  think  by  L.  J.  James  in  another  case  (Parkes 
v.  Stevens,  L.  R.  8  Eq.  866),  I  think  it  will  not  do  if  you 
invented  the  gridiron  pendulum  to  say  "  I  have  invented  a 
better  clock  than  anybody  else,"  not  telling  the  public  what 
you  have  done  to  make  it  better  than  any  other  clock  that 
is  known.'  Again,  in  Moore  v.  Jienm-tt  (1  R.  P.  C.  148), 
Lord  Selbornc,  C.,  said,  '  The  case  of  Foxicell  v.  Bostock  was 
qualified  or  explained  in  Harrison  v.  A  ndrston  Foundry  Co. 
.  .  .  and  so  explained  it  appears  to  me  to  amount  to  no 
more  than  this  :  that  when  a  claim  is  made  for  a  general 
combination  and  arrangement  of  the  different  parts  of  a 
machine,  if  the  Court  sees  that  the  combination  is  not  new, 
but  that  there  is  some  particular  improvement  in  some 
particular  part,  it  will  not  do  to  claim  the  whole  combina- 
tion as  new,  but  you  must  condescend  upon  that  which  is 


THE  COMPLETE  SPECIFICATION  135 

improved.  For  example,  if  a  machine  had  been  long  in 
use  in  the  brush  trade  and  some  particular  improvement 
.  .  .  had  been  made,  the  general  combination  remaining 
the  same,  then,  according  to  the  decision  in  Foxwell  v. 
Bostock,  by  describing  it  as  a  new  combination  you  would 
be  misdescribing  it,  because,  indeed,  the  thing  discovered 
would  be  a  particular  improvement  upon  a  particular  part 
of  that  combination.  And  upon  the  principle  that  the 
specification  should  not  be  vague,  but  should  give  sufficient 
information,  it  ought  not  to  disguise  the  real  invention  by 
a  claim  so  wide  that  anyone  would  suppose  something  to 
be  claimed  as  new  which  is  not,  but  it  should  do  it  suffi- 
ciently and  with  proper  precision.' 

Having  studied  the  rules  previously  propounded  as  those 
by  which  he  ought  to  be  chiefly  guided  in  preparing  his 
specification,  the  patentee  may  now  be  cautioned  on  the 
subject  of  certain  faults,  which,  if  committed,  would  have  a 
disastrous  effect  upon  its  validity,  and  against  which,  there- 
fore, he  cannot  be  too  vigilantly  upon  his  guard. 

Ambiguity  to  be  eschewed. — The  fatal  effect  of  ambiguous 
language  in  a  specification  is  illustrated  by  the  case  of 
Hastings  v.  Brown  (17  Jur.  648 ;  S.  C.,  1  E.  &  B.  454).  A 
patent  was  obtained  for  arrangements  for  raising  ships' 
anchors,  and  the  specification  claimed  as  the  invention  '  a 
cable-holder  to  hold  without  slipping  a  chain  cable  of  any 
size,'  but  it  could  not  be  gathered  from  it  whether  the 
inventor  claimed  a  cable-holder  to  hold  chain  cables  of  any 
one  size,  or  to  hold  chain  cables  of  different  sizes.  Now,  a 
cable-holder  to  hold  a  chain  cable  of  any  one  size  was 
already  known  at  the  date  of  the  patent.  '  The  patentee,' 
said  Lord  Campbell,  when  the  case  was  argued  before  the 
Court  of  Queen's  Bench,  on  a  motion  to  enter  a  nonsuit, 
'  ought  to  state  distinctly  in  his  specification  what  is  his 
invention,  and  to  describe  the  limits  within  which  he  is  to 
enjoy  a  monopoly.  That  is  not  done  in  this  case  with 
respect  to  the  nature  of  the  cable-holder.  What  is  claimed 
[in  the  pleadings]  is  a  right  to  construct  a  capstan  which 
will  raise  chain  cables  of  different  dimensions.  Does  the 


136  THE  COMPLETE  SPECIFICATION 

plaintitT  di>rl<>sr  in  his  s|*  c  ification  that  he  claims  that 
iu\«  ntion  '.'  If  it  is  only  claimed  with  regard  to  one  ca 
then  there  is  no  infringement  of  the  patent.  The  vice  of 
the  specification  is,  that  it  is  quite  equivocal  what  tin  claim 
is.  There  is  nothing  in  tin-  titl<  \\hirh  at  all  assists  us; 
and  \\hni  we  look  to  the  description  in  tin  specification, 
\\  hirli  speaks  of  "  a  chain  cable  of  any  size/'  I  think  that 
the  proper  construction  t  ,  )„  put  upon  the  words  is  that 
tiny  UK  an  "one  chain  <aM«."  At  all  events,  they  are 
capable  of  that  meaning;  and  if  the  specification  is  equi- 
vocal, it  is  bad.'  And  Mr.  Juxti,;  ( ',,/,•/ //////•  added,  '  If  the 
specification  on  a  fair  int.  rpn -tation  hi-  equivocal,  it  is 
insufficient.'  The  rule  for  a  nonsuit  was  accordingly  made 
absolute. 

In    Turn.r  v.    \Vint,>r  (MY.  P.  C.  80),  A*h<>  aid 

that  if  there  is  any  unnecessary  ambiguity  affectedly  intro- 
duced into  the  specification,  or  anything  which  tends  to 
mislead  the  public,  the  patent  is  void,  and  it  was  laid  down 
in  GaUuH-nii  v.  llb-adcn  (1  W.  1'.  (  .  584  .  that  if  tin  re  is  a 
want  of  clearness  in  the  specification,  so  that  tin  public 
cannot  afterwards  avail  themselves  of  the  invention,  much 
more  if  there  is  any  studied  am  lenity  in  it,  so  as  to  con- 
ceal the  invention  from  the  public,  no  doubt  the  patent 
would  be  completely  void. 

Mnxt  nut  xi-t  forth  tir»  nn-tlimlx  ichi-n  /»;////  mn-  ix  i-ffi-ctire. — 

If  two  methods  of  doinxr  a  thing  are  described  in  the  speci- 
fication, and  by  one  of  these  it  cannot  be  done,  the  specifi- 
cation is  bad.     (liiyina  v.  Cntl*-,-,  Macr.  P.  C.  187  :   / 
v.  K.I,, -ton,  8  C.  B.  165.) 

Medlock's  specification  of  his  invention  for  making  red 
and  purple  dyes  from  aniline  commenced  the  description 
of  the  process  thus : — '  I  mix  aniline  with  dry  arsenic  acid 
and  allow  the  mixture  to  stand  for  some  time,  or  I  accelerate 
the  operation  by  heating  it  to  or  near  its  boiling-point 
until  it  assumes  a  rich  purple  colour,  and  then  I  mix  it 
with  Ixnling  water  and  allow  it  to  cool :  when  cold  it  is 
filtered  and  decanted.'  When  the  case  went  before  the 
House  of  Lords,  it  was  held,  in  affirmation  of  the  view 


THE  COMPLETE  SPECIFICATION  137 

taken  by  the  Lord  Chancellor,  that  on  the  construction  of 
the  whole  specification  two  processes,  a  hot  and  a  cold 
process,  were  described,  and  as  it  was  proved  that  only  the 
hot  process  was  effective,  the  specification  was  declared  to 
be  bad  and  the  patent  consequently  invalid.  It  was  urged 
that  every  person  well  informed  on  the  subject  could  see 
that  the  cold  process  was  ineffective,  but  '  this,'  it  was  said, 
'  would  be  to  correct  the  specification  by  the  superior  in- 
telligence of  the  reader.'  (Simpson  v.  Holliday,  13  W.  E. 
577,  affirmed  L.  E.  1  H.  L.  315.) 

Must  not  contain  misdirections  or  misrepresentations. — If 
the  specification  contains  language  calculated  to  mislead 
in  regard  to  an  important  part  of  the  patented  process,  as 
where  it  contains  positive  misdirections  as  to  the  mode  of 
operating,  or  as  to  the  materials  to  be  employed,  the  patent 
will  likewise  be  void.  '  You  must  not  mislead  people '  (said 
Jcsscl,  M.  11.,  in  Plimpton  v.  Malcolmson,  3  L.  E.  Ch.  D. 
531,  576)  'by  telling  them  to  do  something  wrong,  and 
leaving  them  to  find  out  the  mistake.  .  .  .  You  must  not 
give  people  mechanical  problems  and  call  them  specifica- 
tions.' 

On  the  trial  of  Palmer  v.  Wagstaff  (Newton's  Lond. 
Journ.  vol.  xliii.  p.  131),  an  action  brought  by  a  candle 
manufacturer  for  an  infringement  of  a  patent  for  improve- 
ments in  the  manufacture  of  candles,  it  was  alleged  that 
the  specification  contained  a  positive  misdirection  as  to  the 
position  in  which  the  wicks  were  to  be  placed  in  the  process 
of  manufacture.  The  object  proposed  was  the  production 
of  a  candle  requiring  no  snuffing,  by  using  two  or  more 
plaited  wicks,  arranged  in  such  a  manner  that  they  would 
separate  and  bend  outwards  as  the  candle  was  burned. 
Now,  it  was  shown  that  if  the  directions  of  the  specification 
were  followed,  the  candle  would  require  lighting  at  the 
bottom  instead  of  the  top.  If  lighted  at  the  top,  the  wicks 
converged  instead  of  diverging,  and  produced  a  long  snuff. 
The  judge  (Pollock,  C.  B.)  told  the  jury  that  this  was  a 
serious  mistake  ;  and  though  the  verdict  was  given  against 
the  plaintiff  upon  other  points  than  those  connected  with 


138  THE  COMPLETE  SPECIFICATION 

the  validity  of  the  specification,  there  is  reason  to  suppose 

this   instrument  could    not    have    been  supported. 

Win -re  a  specification  claimed  the  process  of  purifying 

sulphate  of  alumina  l>y  means  of  peroxide  of  manganese 
\\hrthiT  in  the  hydratcd  or  anhydrous  form,  and  it  was 
proved  that  the  use  of  the  latter  form  was  impracticable, 
patent  could   not  be  sustained.     Kurt;  ••<•  (5 

l;.  1'.  C.  184).    See  also  Sar«>/  1  l;%.  un.l  Moo. 

1 ;  1  W.  P.  C.  88) ;  /  r.  Sfc  » •  .«  i 1  W.  1'.  C.  -218). 

It  may  be  inferred,  from  the  case  of  Hudthirt  \.  (irim- 
»Juiw  (1  W.  P.  C.  85),  that  the  assertion  in  the  specifica- 
tion of  something  In  in^'  important,  when  in  point  of  fact 
it  is  not,  \\ill  vitiate  the  patent,  because  there  is  evidence 
of  an  attempt  to  deceive.  Again,  if  anything  is  said  to  be 
immaterial  which  is  in  reality  material,  this  will  be  a  fatal 
defect.  Thus,  in  \,'il*m  \.  Hnr/,,r,l  d.  \V.  1'.  C.  818), 
7W.v,  //.,  said,  '  The  patentee  states  that  the  size  and 
form  of  the  vessel  in  which  the  air  is  heated,  previous  to 
its  being  driven  into  the  furnace,  are  immaterial.  Now, 
my  strong  opinion  is  that  the  clause  is  an  incorrect  state- 
ment, and  that  being  untrue  vitiates  the  specification, 
and  prevents  the  patent  from  being  a  good  patent.'  See 
also  Simpson  v.  llnlli<l<iy  (18  W.  R.  577,  affirmed  L.  1:.  1 
H.  L.  315). 

Misrepresentations  as  to  the  object  or  capabilities  of 
the  invention,  or  as  to  other  important  matters,  will  deprive 
the  inventor  of  the  benefit  of  his  patent.  For  instance,  a 
patent  was  obtained  for  a  machine  for  making  paper  in 
single  sheets  from  one  to  twelve  feet  wide.  It  was  proved 
that  a  single  machine  would  make  paper  only  of  one  de- 
finite width,  and  that  if  paper  of  some  other  width  was 
required,  another  machine  must  be  employed.  It  was  held 
by  the  Court  of  K.  B.  that  the  capability  of  the  machine 
had  been  misrepresented  in  an  important  respect,  and  that 
the  patent  was  void.  (Bloxam  v.  Eltfe,  6  B.  <t  C.  169.) 
And  see  Crottley  v.  Potter  (Macr.  P.  C.  249).  If  the 
patented  apparatus,  as  described,  fails  to  effect  what  the 
inventor  avers  that  it  will  effect,  although  it  may  do  some 


THE  COMPLETE  SPECIFICATION  139 

very  small  part  of  the  proposed  work,  the  patent  is  bad. 
(Eastcrbrook  v.  Great  Western  Railway  Company,  2  E.  P.  C. 
301.) 

But  on  the  trial  of  Cole  v.  Saqui  (5  E.  P.  C.  494),  an 
action  for  the  infringement  of  a  patent,  the  specification 
under  which  said  in  effect  that  the  invention  was  capable 
of  application  to  other  purposes  beyond  that  for  which 
protection  was  claimed,  but  did  not  describe  how  those 
purposes  were  to  be  effected,  Mr.  Justice  Kay  held  that 
this  did  not  invalidate  the  patent.  '  I  can  see  no  objection 
to  a  patentee  stating  in  his  specification  that  what  he  has 
invented  with  reference  to  one  particular  machine  may  be 
applied  to  other  machines.' 

Technical  and  Scientific  Terms. — In  making  use  of 
technical  language  great  care  should  be  taken  that  the 
words  are  employed  in  their  true  meanings,  and  in  their 
proper  significations.  To  give  an  example,  a  valuable 
patent  was  placed  in  jeopardy  by  the  misuse  of  certain 
chemical  terms  in  the  specification.  The  inventor  gave 
directions  for  using  in  the  process  for  which  he  obtained 
his  patent,  hydro-carbon  gas,  carbon  gas,  and  carbonic  gas. 
Now,  amongst  chemists  a  hydro-carbon  gas  means  a  gas 
composed  only  of  hydrogen  and  carbon ;  but  the  gas  which 
the  inventor  had  in  view  was  one  containing  oxygen  also, 
and  therefore  not  a  true  hydro-carbon,  which  would  not 
have  effected  his  purpose.  Again,  his  terms  carbon  gas  and 
carbonic  gas  include  carbonic  acid  gas  and  carbonic  oxide, 
both  of  which  were  unsuitable.  These  were  serious  objec- 
tions, and  if  the  specification  had  been  interpreted  with 
the  strictness  with  which  some  other  specifications  have 
been  construed,  the  mistakes  would  have  been  held  fatal ; 
but  a  benign  view  of  the  matter  was  taken,  and  the  objec- 
tions were  not  allowed  to  prevail.  (Edison  v.  Woodhome, 
3  E.  P.  C.  183.) 

Simple  Mistakes. — Simple  mistakes,  being  merely  words 
used  in  an  inaccurate  sense,  which  words  are  often  used, 
and  are  explained  by  the  context,  or  by  the  drawings 
annexed,  will  not  avoid  the  patent.  Thus,  in  Bloxam  v. 


140  THE  COMPLETE  SPECIFICATION 

the  sped!). 
made  use  of  1 1 

and  rt«  df  r/.i. •//..».  for  different  screws;  but  the  context 
and  the  drawings  showed  what  was  in 
ti"n  taken  on  this  ground  was  not  sustained.  In  another 
specification  the  word  'discolour'  waa  used,  with  the 
meaning 'discharge  the  colour.'  This,  though  a  mistake 
in  translating  tin-  l-'rem-h  word  '  de.-olorer,'  was  held  not 
important  enough  to  vitiate  the  instrument.  A  court  of 
law  will  not  insist  upon  accuracy  in  minute  and  unim- 
portant matters;  it  will  not  insist  upon  strict  logical 
•  •tiiess  :  it  will  overlook  -uch  •  \id.nt  errors  as  tin- 
mention  of  '  imponderable  substances.'  (/'.»//"•  / .  '  .  /.'..  in 
i  v.  l.<i*ton,  at  Nisi  1'rius,  Newton's  Lond.  Journ. 
vol.  xlii.  p.  58.)  All  it  requires  is  that  the  patentee  shall 
make  his  meaning  clear,  and  that  his  language  shall  be 
intelligible  to  the  persons  to  whom  it  is  addressed. 

It  was  said  in  the  House  of  Lords  that  after  a  patent 
has  stood  enquiry  and  the  test  of  time,  the  Courts  do  not 
encourage  verbal  objections  to  the  form  of  the  specification. 
I  v.  Ilrtt*,  L.  R.  5  H.  L.  1.) 

CLAIMS. 

Before  the  pasMii^  of  the  Patent-  Art  of  1888  it  had 
become  usual  for  patentees  to  insert  at  the  close  of  their 
specifications  certain  clauses  which  were  known  as  '  Claims.' 
The  insertion  of  claiming  clauses  was  not  then  prescribed 
by  the  law,  but  they  offered  the  patentee  an  opportunity  of 
summing  up  his  invention,  of  setting  forth  in  a  brief  form 
what  he  considered  to  be  its  pith  and  substance,  and  of 
protecting  himself  against  the  danger  of  being  supposed  to 
claim  more  than  he  desired  to  claim. 

By  the  fifth  subsection  of  the  fifth  section  of  the  Act  of 
1883  it  is  directed  that  '  a  complete  specification  must  end 
with  a  distinct  statement  of  the  invention  claimed.' 

The  import  of  these  words  was  discussed  in  the  case 
of  Siddell  \.  I/./.,,.*  ,r,  I;,  p.  c,  416);  one  of  the  Lords 
Justices  (p.  428)  thought  that  '  distinct '  means  no  more 


THE   COMPLETE   SPECIFICATION  141 

than  a  claim  independently  of  and  apart  from  the  descrip- 
tion of  the  nature  of  the  invention  and  of  the  way  in  which 
it  is  to  be  carried  into  effect.  But  the  other  two  LL.  JJ. 
were  of  opinion  that  the  words  '  distinct  statement '  mean 
more  than  a  separate  paragraph.  They  thought  that  the 
Legislature  contemplated  a  distinct  summary  of  the  main 
features  of  the  invention,  something  to  which  the  reader 
might  readily  refer  and  from  which  he  might  learn  without 
turning  to  the  body  of  the  specification  what  the  charac- 
teristic features  of  the  invention  claimed  were.  They  held 
that  a  claim  which  referred  to  a  combination  of  parts  for 
effecting  a  certain  purpose  '  as  hereinbefore  set  forth ' 
did  not  satisfy  the  requirement  of  the  Act.  However,  all 
three  Judges  were  of  opinion  that  the  words  of  the  sub- 
section are  merely  directory,  and  that  non-compliance 
with  this  direction  does  not  invalidate  the  patent  (pp.  429, 
432,  433). 

Under  the  old  law  all  the  claiming  clauses  might  be 
struck  out  of  the  specification  by  disclaimer,  if  there 
remained  sufficient  in  the  specification  to  show  distinctly 
what  the  invention  was.  (Thomas  v.  WelcJi,  L.  E.  1  C.  P. 
192.)  But  this  cannot  now  be  done,  since  the  Act  of  1883 
requires  every  specification  to  end  with  a  claim. 

Some  patentees  introduce  a  large  number  of  claims 
into  their  specifications,  but  this  is  a  dangerous  practice, 
for  the  risks  are  proportionately  increased.  In  one  of  Mr. 
Edison's  patents  there  were  no  fewer  than  thirty  claims, 
all  of  which  except  one  were  afterwards  struck  out  by 
successive  disclaimers. 

Everything  not  claimed  is  impliedly  disclaimed. — Whilst 
a  claim  is  primarily  intended  to  mark  off  what  the  inventor 
conceives  to  be  his  exclusive  property  and  to  warn  the 
public  not  to  trespass  within  the  fence  he  has  set  up,  it 
practically  operates  also  as  a  disclaimer  of  everything  de- 
scribed in  the  specification  except  what  is  expressly  claimed. 
(Harrison  v.  Anderston  Foundry  Company,  L.  E.  1  App. 
Oas.  574.)  This  ought  to  be  kept  in  mind  by  the  inventor 
when  he  is  preparing  this  part  of  his  specification,  and 


142  THE  COMPLETE  8PECIFICAT! 

he  should  be  careful  neither  on  the  one  hand  to  include 
matters  that  are  beyond  thr  boundary  of  the  invention  nor 
on  the  other  to  restrict  his  rights  within  too  narrow  li 
by  leaving  out  what  he  might  have  claimed.     In  the  latter 
case  the  patentee  is  exposed  to  defeat  if  h*  1  .rings  an  action 
against  some  one  who  has  made  use  of   that  which   In 
omitted  to  claim.    (Jaek*«n  v.  \V»l*t<*nhulmt9t  1  R.  P.  C.  1 
r.iirlinrn  v.  H»n*rhM,  Court  of  Appeal  3  R.  P.  C.  268.) 

'  The  real  object  of  what  is  called  a  claim  '  (sai<l  •/ 
L.  J.,  in  riimptun  v.  S],ilh-r.  L.  R.  6  Ch.  D.  412,  426)  « is 
not  to  claim  anything  which  is  not  mentioned  by  the  speci- 
fication, but  to  disclaim  Bonn-thing.  A  man  who  has  in- 
vented something  gives  in  detail  the  whole  of  the  machine 
in  his  specification.  In  doing  that  he  is  of  necessity 
frequently  obliged  to  give  details  of  things  which  are 
perfectly  well  known  and  in  common  use;  he  descril>« - 
new  combinations  of  old  things  to  produce  a  new  result,  «>r 
something  of  that  kind.  Therefore,  having  described  his 
invention  and  the  mode  of  carrying  that  invention  into 
effect,  by  way  of  security  he  says,  "  But  take  notice  I  do 
not  claim  the  whole  of  that  machine ;  I  do  not  claim  the 
whole  of  that  Hindu*  <']>i-r<ni<li,  hut  that  which  is  new,  and 
that  which  I  claim,  is  that  which  I  am  now  about  to  state." 
That  really  is  the  legitimate  object  of  a  claim,  and  you 
must  always  construe  a  claim  with  reference  to  the  whole 
context  of  a  specification.' 

'  It  has  long  been  the  practice'  (said  Jrsxrl,  M.  /,'.,  in 
7/»n/,-x  v.  Sah-tii  Liylitinn  C'nuijMnii,  4  Ch.  D.  607)  '  to  insert 
in  specifications  the  distinct  claim  of  what  is  said  to  be 
comprised  in  the  patent ;  meaning  that  nothing  e\^ 
comprised,  that  everything  else  is  thrown  open  to  the 
public ;  or,  to  put  it  into  other  words,  if  a  man  has 
described  in  his  specification  a  dozen  new  inventions  of  the 
most  useful  character,  but  has  chosen  to  confine  his  claim 
to  one,  he  has  given  to  the  public  the  other  eleven.' 

C'lnims  ought  to  show  clearly  what  if  intended  to  be 
flnimcd. — Particular  attention  should  be  given  to  the  fram- 
ing of  the  claims  so  that  it  may  be  seen  without  difficulty 


THE   COMPLETE   SPECIFICATION  143 

what  it  is  the  inventor  wishes  to  secure.  Where  a  specifi- 
cation was  so  worded  that  it  was  not  clear  whether  the 
patentee  intended  to  claim  a  novel  combination  of  parts, 
or  the  parts  themselves,  some  or  all  of  which  were  old,  the 
patent  was  held  to  be  invalid.  (Row cliffs  v.  Morris,  3  E.  P. 
C.  17,  and  see  Fairbimi  v.  Household,  3  E.  P.  C.  263.) 

A  claim  for  a  combination  will  not  be  deemed  too  vague 
when  there  is  proof  that  a  competent  workman  can  make 
the  combination  from  the  specification  without  experiment. 
(Edison  &  Swan  United  Electric  Light  Co.  v.  Woodhousc, 
4  E.  P.  C.  92.) 

"Where  the  description  in  a  specification  was  in  the  first 
instance  too  general,  but  the  inventor  afterwards  in  de- 
scribing his  invention  referred  to  certain  figures  in  draw- 
ings annexed  to  the  specification,  and  the  claim  was  for 
the  invention  described  with  reference  to  those  figures,  the 
specification  was  held  sufficient.  (Daw  v.  Eley,  14  W.  E. 
126,  and  on  another  hearing,  L.  E.  3  Eq.  497.)  See  also 
Russell  v.  Cowlcy  (I  W.  P.  C.  465) ;  Thomas  v.  Welch  (L. 
E,  1  C.  P.  192). 

In  Kay  v.  Marshall  (2  W.  P.  C.  39),  Cottenham,  C., 
said,  '  The  claim  is  not  intended  to  aid  the  description,  but 
to  ascertain  the  extent  of  what  is  claimed  as  new.  It  is 
not  to  be  looked  to  as  the  means  of  making  a  machine 
according  to  the  patentee's  improvements.  If,  therefore, 
the  specification  containing  the  description  be  sufficiently 
precise,  it  cannot  be  of  any  consequence  that  expressions 
are  used  in  the  claim  which  would  be  too  general  if  they 
proposed  to  be  part  of  the  description.'  See  also  Lister  v. 
Leather  (3  Jur.  N.  s.  811 ;  S.  C.  in  error,  8  E.  &  B.  1004)  ; 
and  Easterbrook  v.  G.  W.  R.  Co.  (2  E.  P.  C.  208). 

If  all  the  parts  are  old  only  the  combination  should  be 
claimed. — If  all  the  parts  of  an  invention,  taken  separately, 
are  old,  the  patent  being  obtained  only  for  a  novel  combi- 
nation of  them,  the  patentee,  in  preparing  the  specification 
for  such  an  invention,  must  take  care  to  limit  his  claim  to 
the  new  combination.  (Lister  v.  Leather,  3  Jur.  N.  s.  811 ; 
S.  C.  in  error,  8  E.  &  B.  1004 ;  Seed  v.  Higgins,  8  H.  L. 


lit  1HK  COMPLETE  SPECIF! 

|  ]  /„///. 

•J  \\.  1'.  t  .  71.) 

Tetl«-\'s  patent  was  for  improvements  in  machin. 
;i^  ami  impelling  wa1  ation  described  a 

great  number  of  mechani'iil  <-<.ntrivanees  tor  effecting  the 
object  in  \iew,  and  com-luded  l.y  claiming,  as  the  patentee's 
invention,  the  several  contrivances,  'both  when  all  used  in 
combination,  and  when  used  severally.'     It  was  shown,  <>n 
th«  trial  of  the  first  action  for  an  infringement,  that  several 
of  these   contrivances  were  old;  and  with  regard  to  one 
in    particular,    which    the    def«  ndanN    \\vrr    ehar^.-d   with 
infrin^in^.    that   a   person   named  Hales  had    pi.  \iously 
procured  a  patent  for  something  substantially  the  same. 
'I'll,   plaintiff  afterwards  entered  a  disclaimer  as  to  st 
parts  of  his  specification,  and  brought  another  action  against 
the  same  defendants.     The  jury  again  returned  a  verdict 
for  the  defendants.     A  rule  to  set  aside  the  verdict,  and  for 
a  new  trial,  having  been  obtained,  the  legal  questions  came 
on  for  argument  before  the  full  court.     It  appeared  that 
the   amended   specification  described  a  centrifugal  pump, 
composed   of    a  hollow  wheel,   revolving   within    a    case 
furnished  with  pipes  for  conveying  the  water.     This  wh« « I 
was  not  stated  to  be  old,  nor  was  it  disclaimed.     The 
specification  claimed  generally  the  machinery  for  raising  and 
impelling  water.     It  also  claimed  the  application  of  th 
ventions  before  mentioned,  'both  when  all  used  in  com- 
bination, and  when  used  severally.'     It  was  held  that  the 
hollow  revolving  wheel  was  thereby  claimed,  and  as  thi> 
was  an  old  invention,  the  specification  was  bad.     By  a 
second  disclaimer  the  patentee's  claims  were  reduced  to  the 
single  one  of  'the  means  of  increasing  the  action  of  tli> 
machine  by  causing  the  liquid  to  enter  the  wheel  at  lx>th 
sides ; '  and  he  then  brought  a  third  action  for  the  infringe- 
ment of  his  patent.     Unfortunately  it  was  shown  that 
previous   inventions   had  embraced  a  contrivance  for  the 
admission  of  the   water  on  both  sides  of  the  wheel ;  and 
Mr.  Justice  Willcs  directed  the  jury  to  find  for  the  defendant, 
for  the  reason  that,  although  the  wheel  had  been  previously 


THE  COMPLETE  SPECIFICATION  145 

combined  with  apparatus  which  made  the  combination  use- 
less, yet  that  the  contrivance  in  question  had  been  made 
public  property,  and  could  not  of  itself  be  made  the  subject 
of  a  patent.  The  Court  of  C.  P.  said  that  the  use  of  a 
wheel  known  before,  in  a  manner  known  before,  could  not 
be  deemed  an  invention  capable  of  sustaining  a  patent,  and 
held  that  the  judge  was  right.  (Tctley  v.  Easton,  Macr. 
P.  C.  48;  2  C.  B.  N.  s.  706.) 

New  parts  and  minor  combinations  must  be  expressly 
claimed. — Where  a  patentee  claims  in  his  specification  an 
entire  combination  only,  he  will  be  deemed  not  to  have 
claimed  any  of  the  novel  minor  combinations  if  any  such 
there  be.  A  combination  of  three  parts  is  a  different  thing 
from  a  combination  of  two  of  them ;  and  if  a  patentee 
desires  to  secure  the  minor  combination  he  must  distinctly 
claim  it.  (Clark  v.  Adie,  L.  R.  10  Ch.  667 ;  affirmed  on 
appeal,  L.  R.  2  App.  Gas.  315.) 

With  respect  to  patents  granted  before  the  Act  of  1883 
came  into  operation,  it  was  held  in  Nordenfeldt  v.  Gardner 
<1  R.  P.  C.  69),  when  the  patent  was  for  an  improvement 
consisting  of  an  addition  to  an  old  mechanical  combination, 
that  as  the  improvement  was  made  clearly  manifest  on  the 
face  of  the  specification,  where  it  was  sufficiently  pointed 
out  what  the  improvement  was,  the  patent  was  not  invalid 
although  there  was  no  mention  of  the  improvement  in  the 
claims.  On  the  other  hand,  where  a  patentee  had  omitted 
from  his  claim  a  process  which  was  properly  described  in 
the  body  of  the  specification,  an  action  brought  by  him  for 
the  infringement  of  the  process  w7as  dismissed.  (Jackson  v. 
Wolstenhulmes,  1  R.  P.  C.  105.) 

The  claims  must  not  cover  too  much. — The  inventor 
should  beware  of  claiming  more  than  he  is  strictly  entitled  to, 
since  a  failure  in  part  is  a  failure  altogether,  and  that  to 
which  he  has  a  just  right  will  fall  along  with  that  which 
does  not  belong  to  him.  To  use  Lord  Eldon's  illustration 
— if  there  be  a  patent  both  for  a  machine  and  for  an  im- 
provement in  the  use  of  it,  and  it  cannot  be  supported  for 
the  machine,  although  it  might  for  the  improvement  merely, 


146  THE  COMPLETE  SPECIFICATION 

it  is  good  for  nothing  on  account  of  its  attempting  to  cover 
too  much.     (  Hill  v.  Thnmpx,.,,.  i  W.  1'.  c.  -2 ; 

Therefore,  if  an  inventor  lays  claim  to  a  principle  in 
addition  to  a  method  of  carrying  it  into  effect,  and  it  should 
turn  out  that  tin-  principle  was  known  and  had  been  i 
viously  applied  to  a  similar  purpose,  in  such  case  the  patent 
cannot  stand. 

In  the  specification  under  the  patent  \\hich  formed  the 
ground  of  dispute  in  Hill  v.  7  A.  ////  1  W.  P.  C.  289),  the 
patentee  claimed  not  only  the  use  of  a  particular  quantity  of 
lime  in  smelting  iron,  hut  the  discovery  of  the  usefulness  of 
lime  in  that  process  generally.  It  appeared,  however,  that 
lime  had  been  previously  used  for  the  purpose,  and  the 
patent  was  accordingly  held  bad,  although,  if  the  patentee 
had  restricted  bis  claim  to  the  particular  proportions  of 
lime  and  metal,  it  might  have  been  sustained.  Again,  tin- 
specification  under  Minter's  patent,  for  an  improvement  in 
the  construction  of  chairs,  was  faulty  for  a  similar  reason : 
its  claim  was  too  extensive.  The  improvement  consisted  in 
applying  a  self-adjusting  leverage  to  the  back  and  seat  of 
a  chair,  whereby  the  weight  on  the  seat  acted  as  a  counter- 
balance to  the  pressure  against  the  back.  It  was  proved 
that  one  Brown  had  previously  invented  a  chair  on  the 
same  principle,  but  his  application  of  it  was  encumbered 
with  additional  machinery.  If  Minter  had  restricted  his 
claim  to  the  particular  mode  in  which  he  effected  the  thing, 
his  patent  would  have  been  valid ;  but  since  the  specifica- 
tion went  generally  to  the  application  of  a  self-adjusting 
leverage  to  the  given  purpose,  it  claimed  more  than  he  was 
entitled  to ;  and  if  the  patent  had  been  held  good,  Brown 
could  not  have  continued  to  make  his  chair  without  infring- 
ing it.  (Mintim  v.  Mmnr,  1  W.  P.  C.  188.) 

Under  a  patent  for  improvements  in  stoves  the  specifi- 
cation claimed  the  construction  of  stoves  made  in  such  a 
manner  that  the  fuel  should  be  introduced  from  beneath. 
Now  it  was  shown  at  the  trial  of  an  action  of  scire  facias 
that  grates  had  been  previously  constructed  on  this  prin- 
ciple ;  and  although  the  particular  method  of  effecting  the 


THE  COMPLETE  SPECIFICATION  147 

object  was  new,  yet  Lord  Ellenborough  held  that  as  the 
patentee  had  claimed  the  principle,  which  was  not  new,  the 
patent  was  bad.  If  the  inventor  had  limited  his  claim  to 
his  own  mode  of  carrying  the  principle  into  effect  his  patent 
would  have  been  upheld.  (Rex  v.  Cutler,  1  Stark.  354,  1 
W.  P.  C.  76.) 

The  case  of  Rex  v.  Else  (1  W.  P.  C.  76)  affords  another 
instance  of  the  same  error.  The  specification  claimed  in 
effect  the  exclusive  right  of  combining  silk  and  cotton 
thread,  and  then  of  making  lace  of  the  combined  material. 
It  was  proved  that  silk  and  cotton  thread  had  previously 
been  combined  in  some  mode  or  other ;  and  although  the 
material  so  constructed  was  unfit  for  making  lace  on  account 
of  its  coarseness,  yet  as  the  patentee  did  not  confine  him- 
self to  any  particular  mode  of  combining  the  two,  his  claim 
was  held  to  extend  to  every  mode,  and  was  therefore  bad. 

Fisher  and  Gibbons  obtained  a  patent  in  1844  for  an 
invention  of  a  machine  in  which  a  shuttle  was  combined 
with  a  needle  for  producing  stitches  to  ornament  fabrics. 
In  1846  Thomas  procured  a  patent  for  improvements  in 
machinery  for  sewing  and  stitching  various  fabrics.  His 
specification  was  construed  as  claiming  generally  the  use  of 
needles  in  combination  with  shuttles  for  producing  stitches ; 
and  although  he  showed  one  particular  form  of  a  needle 
and  shuttle  machine  which  was  a  different  combination 
from  that  described  by  Fisher  and  Gibbons,  it  was  held 
that,  having  regard  to  the  language  employed,  his  claim 
could  not  be  confined  to  that  particular  combination.  His 
patent  was,  therefore,  invalid  in  consequence  of  the  patentee 
claiming  too  much.  (Thomas  v.  Foxwell,  5  Jur.  N.  s.  37  ; 
6  Jur.  N.  s.  271.) 

Under  a  patent  for  improvements  in  weaving  figured 
fabrics,  the  specification  described  mechanism  for  weaving 
coach  lace,  but  the  patentee  said  that  he  did  not  confine 
himself  to  narrow  goods  only,  as  his  improvements  were 
applicable  to  the  production  of  carpets.  It  was  shown  that 
the  specified  mechanism  could  not  be  adapted  to  the  weaving 
of  carpets  by  merely  enlarging  it,  but  required  certain 

x,  2 


148  THE  COMPLETE  SPECIFICATION 

additions  to  be  made  to  it  before  it  could  be  employed  for 
that  purposo.  Sir  /'.  /'..//..,/..  <  .  /;.,  t..i,l  th,.  jury,  at  the 
trial  of  an  action  for  an  infringement,  that  if  carets  could 
not  be  made  by  the  means  stated  in  the  specification,  the 
patent  was  not  good  ;  and  tin-  jury  n  turned  a  vcnlitt  in 
favour  of  the  defendant.  (Croulfij  \.  M:u-r.  I*.  C. 

240.) 

So  likewise  if  a  specification  claims  a  novel  combination 
of  parts  forming  an  entire  machine,  and  also  makes  a  claim 
to  a  subordinate  combination  which  is  not  new,  the  patent 
cannot  stand.  (<  \ .  Smith,  1  11.  P.  C.  81.) 

Under  a  patent  for  an  invention  for  constructing  belts 
for  driving  machinery  the  specification  claimed  to  make 
belts  of  that  class  of  cotton  canvas  which  was  known  in  the 
market  as  hard  woven  canvas.  Now  it  was  proved  that 
there  were  ten  qualities  of  such  canvas  in  the  market,  and 
that  at  the  most  three  of  them  would  answer  the  purpose. 
In  the  absence  of  evidence  that  an  ordinary  workman  would 
know  which  quality  to  select  without  trying  experiments,  it 
was  held  by  the  Court  of  Appeal  that  the  specification 
claimed  too  much.  (Gaudy  v.  Ileddaway,  2  R.  P.  C.  49.) 

A  specification  claimed  the  use  of  all  peroxides  of  man- 
ganese for  a  given  purpose,  but  it  was  shown  that  only  the 
hydrated  peroxide  would  have  the  desired  effect,  and  the 
patent  was  therefore  declared  to  be  invalid.  (Knrtz  v.  Sj> 
5  R.  P.  C.  161.)  See  also  Ralston  v.  Smith  (9  C.  B.  N.  B. 
117 ;  11  C.  B.  N.  s.  471 ;  11  H.  L.  Cas.  228) ;  Booth  v. 
K.nnard  (2  H.  &  N.  84);  Saunders  v.  Aston  (18  B.  &  A.I. 
886  ;  1  W.  P.  C.  75  n.)  ;  and  Ilaworth  v.  Hnrdcaxtl*-  U  AY. 
P.  C.  484.) 

We  must  not  forget,  however,  the  remarks  made  by 
Jessel,  M.  R.,  in  the  case  of  1  n  v.  Loe  (L.  R.  9  Ch. 

D.  58) :  '  It  does  not  follow  that  because  an  inventor  thinks 
he  has  invented  more  than  he  has  in  fact,  and  describes  the 
advantages  of  his  invention,  and  some  of  these  advantages 
arise  from  an  old  portion  of  the  invention,  it  may  not  still 
be  a  good  patent,  provided  that  the  invention  as  claimed  is 
BO  limited  as  to  fail  to  cover  the  actual  thing  in  use,  while 


THE  COMPLETE  SPECIFICATION  149 

it  covers  some  of  the  advantages  mentioned ;  in  such  a 
case  it  may  still  no  doubt  be  a  good  patent.' 

Vague,  speculative  claims  to  be  avoided. — A  patentee  will 
not  be  allowed  to  make  wide  hypothetical  or  speculative 
claims  based  on  mere  conjecture  or  surmise,  nor  will  his 
patent  be  permitted  to  cover  matters  of  which  he  was 
ignorant  at  the  date  of  his  patent.  In  the  specification 
under  a  patent  for  improvements  in  machinery  for  raising 
water,  the  patentee  said,  'If  any  gases  or  elastic  media 
other  than  atmospheric  air  are  used,  with  which  to  charge 
the  case  [part  of  the  machinery],  I  claim  the  sole  right 
to  do  so.'  Pollock,  C.  B.,  who  tried  an  action  brought  for 
infringing  this  patent  (Tetley  v.  Easton,  Macr.  P.  C.  48), 
remarked  upon  this  passage,  that,  in  point  of  law,  the 
patentee  had  no  right  to  make  such  a  claim ;  the  law  would 
not  permit  a  patentee  to  claim  more  than  he  has  invented. 
'  It  will  permit  him  to  claim  that  which  he  has  invented  by 
means  of  successful  experiments  or  otherwise,  and  which  he 
has  given  to  the  public,  but  not  that  which  is  the  mere 
subject  of  his  speculation  or  imagination,  or  of  his  endea- 
vouring to  grasp  more  than  he  is  entitled  to.  I  think  we 
are  bound  to  give,  as  far  as  possible,  the  fullest  effect  to  an 
invention ;  but,  on  the  other  hand,  I  think  we  are  also 
bound  to  oppose  the  endeavours  to  make  a  patent  grasp  at 
and  embrace  a  number  of  matters  that  were  never  in  the 
head  of  the  inventor.' 

In  another  part  of  the  specification,  the  patentee 
described  a  wheel  with  straight  arms,  and  then  he  said, 
*I  propose  to  construct  the  wheel  of  every  variety  of 
configuration,  so  long  as  it  is  constructed  with  a  channel 
in  the  interior.'  The  defendant  had  made  use  of  a  wheel 
with  bent  arms,  and  the  patentee  treated  this  as  an  infringe- 
ment, although  he  admitted  that  at  the  time  he  obtained 
his  patent  he  had  never  thought  of  bent  arms,  and  also  that 
curved  arms  almost  trebled  the  effect  of  the  machine. 
The  judge  told  the  jury  that  the  patentee's  claim  to  every 
shape  of  arm  would  not  stand.  To  hold  that  it  was  good 
would  be  to  reward  a  man  who  had  rashly  and  ignorantly 


150  THE  COMPLETE  8PI  :OX 

taken  out  a  patent  on  a  subject  ho  had  not  appreciated. 
The  same  learned  judge,  when  presiding  at  the  trial  of 
Stcrfn*  v.  A  I  \Y.  P.  C.  184) — an  action  for  inf 

ing  a  patent  for  processes  for  combining  materials  to  form 
cements— said,  with  reference  to  that  part  of  the  specifica- 
tion which  was  In-lil  to  claim  tin-  use,  imt  only  of  a  parti- 
cular acid,  but  of  all  acids  which  mi^ht  succeed,  that  no 
patentee  could  be  allowed  to  make  such  a  claim,  and  to 
say,  Whereas  other  substances  will  succeed,  I  claim  them 
all. 

A  perusal  of  these  cases  will  show  that  it  is  safer  for  a 
patentee  to  restrict  his  claim  to  the  use  of  those  processes, 
or  those  materials,  which  he  has  found  by  actual  trial  to 
answer  the  purpose,  than  to  extend  it  to  matters  of  which 
he  has  no  accurate  knowledge;  since,  in  doing  this,  he 
may  either  claim  something  which  will  not  answer  the 
object  in  view,  something  which  is  not  new,  or  something 
which  he  does  not  sufficiently  describe.  The  law  will  aid 
him,  without  any  general  claim  in  his  specification,  in 
repressing  infringements  which  are  an  illegal  imitation  of 
his  process  behind  a  colourable  variation,  or  by  means  of 
mechanical  or  chemical  equivalents. 

'  The  safest  course  for  patentees  to  adopt '  (said  Pollxk, 
C.  B.,  to  the  jury  on  the  trial  of  Crosslcy  v.  Potter,  Man-.  P. 
C.  256)  'in  framing  their  specifications  is,  instead  of 
including  everything,  to  confine  themselves  specifically  to 
one  good  thing,  and  a  jury  will  always  take  care  that  if 
that  be  a  real  invention,  no  man  under  colour  of  improve- 
ment shall  be  allowed  to  interfere  with  that  which  is  the 
offspring  of  their  genius.' 

In  the  case  of  Arnold  v.  Bradbury  (L.  R.  6  Ch.  706) 
Lord  Hathrrli'ii,  C.,  said  that  a  claim  must  be  very  large 
and  vague  indeed  to  justify  any  court  in  saying,  indepen- 
dently of  evidence,  that  it  is  impossible  to  sustain  a  patent 
based  upon  it.  In  that  case  he  decided  that  the  claims  for 
making  ruffles  '  by  machinery '  meant  by  the  described 
machinery,  and  that  there  was  no  ground  for  holding  that 
the  claims  were  too  large  per  sc.  In  the  course  of  his 


THE  COMPLETE  SPECIFICATION  151 

judgment,  he  remarked  that  it  was  a  singular  fact  that  no 
case  had  been  cited  from  the  law  books  of  any  claim  being 
held  to  be  too  large  on  account  of  the  greatness  of  the 
claim  independently  of  external  evidence.  But  he  referred 
to  an  American  case  (Wyatt  v.  Stone,  1  Storey  273)  where 
the  patentee  had  claimed  every  method  of  cutting  ice  by 
machinery. 


152  INTERPRETATION  OP  SPECIFICATIONS 


CHAPTER    X. 
ON    THE    INTERPRETATION   OF   SPECIFICATIONS. 

FORMERLY  there  was  a  disposition  in  the  Courts  to  take 
part  against  patentees,  under  the  impression  that  mono- 
polies were  not  to  be  encouraged,  attaching  the  old  odious 
sense  of  the  term  to  the  phrase  indicating  a  patent  privi- 
lege for  an  invention.  The  judges  were  then  astute  to 
detect  flaws  in  specifications,  to  the  language  of  which  tin  y 
were  accustomed  to  apply  a  rigorous  criticism.  Then  came 
a  change,  and  some  of  the  judges  thought  that  a  specifica- 
tion ought  to  be  read  with  indulgence  ;  that  a  liberal 
construction  should  be  put  upon  it,  and  that  the  words 
should  receive  a  benign  or  a  benevolent  interpretation. 
But  of  late  years  the  Courts  have  laid  down  that  specifica- 
tions are  to  be  construed  like  other  written  documents, 
that  is,  with  a  disposition  to  read  them  fairly,  and  with  an 
endeavour  to  ascertain  their  real  meaning,  not  straining 
tlu  language  nor  giving  effect  to  petty  objections.  In  the 
case  of  Newton  v.  Hallard  (Hil.  Term,  1872)  Mr.  J> 
fir- -re  said,  'A  specification  should  not  be  construed  in  a 
technical  or  captious  spirit,  but  with  a  fair  intention  to 
give  it  effect  if  it  be  reasonably  intelligible.'  In  the  case 
of  Harrison  v.  Tin-  .1m//  r*t<»i  Foundry  Company  (L.  R.  1 
App.  Cas.  574)  Lord  Chelmx/nnl  said,  '  In  the  construction 
of  a  specification  it  appears  to  me  that  it  ought  not  to  be 
subjected  to  what  has  been  called  a  benign  interpretation,  or 
to  a  strict  one.  The  language  should  be  construed  accord- 
ing to  its  ordinary  meaning,  the  understanding  of  technical 
words  being,  of  course,  confined  to  those  who  are  conver- 
sant with  the  subject-matter  of  the  invention.'  '  I  am 


INTERPRETATION  OF  SPECIFICATIONS  153 

anxious  '  (said  Sir  G.  Jessel,  M.  R.,  in  Hinks  v.  Safety 
Lighting  Company,  L.  E.  4  Ch.  D.  607),  '  as  I  believe  every 
judge  is  who  knows  anything  of  patent  law,  to  support 
honest  bond-fide  inventors  who  have  actually  invented 
something  novel  and  useful,  and  to  prevent  their  patents 
from  being  overturned  on  mere  technical  objections  or  on 
mere  cavillings  with  the  language  of  the  specification,  so 
as  to  deprive  the  inventor  of  the  benefit  of  his  invention. 
This  is  sometimes  called  a  "  benevolent "  mode  of  construc- 
tion. Perhaps  that  is  not  the  best  term  to  use,  but  it  may 
be  described  as  construing  a  specification  fairly,  with  a 
judicial  anxiety  to  support  a  really  useful  invention,  if  it 
can  be  supported  on  a  reasonable  construction  of  the 
patent.'  See  also  the  remarks  of  the  same  learned  judge, 
and  of  Brett,  L.  J.t  in  Plimpton  v.  Spiller  (L.  E.  6  Ch.  D. 
412).  Also  the  observations  of  Sir  G.  Jessel,  M.  E.,  in 
Otto  v.  Linford  (Court  of  App.  46  L.  T.  N.  s.  35).  In 
Dudgeon  v.  Thomson  (L.  E.  3  App.  Cas.  53),  Lord  Blackburn 
said,  '  I  apprehend  the  duty  of  the  Court  is  fairly  and  truly 
to  construe  the  specification,  neither  favouring  the  one  side 
nor  the  other ;  neither  putting  an  unfair  gloss  or  construc- 
tion upon  the  specification  for  the  purpose  of  saving  a 
patent,  nor  in  order  to  extend  it.' 

The  same  learned  judge,  in  Clark  v.  Adie  (L.  E.  2 
App.  Cas.  423),  said,  '  In  construing  the  specification  we 
must  construe  it  like  all  written  documents,  taking  the  words 
and  seeing  what  is  the  meaning  of  those  words  when  applied 
to  the  subject-matter ;  and  in  the  case  of  a  specification 
which  is  addressed,  not  to  the  world  at  large,  but  to  a  par- 
ticular class,  namely,  skilled  mechanicians  possessing  a 
certain  amount  of  knowledge,  it  is  material  for  the  tribunal 
to  put  itself  in  the  position  of  such  a  class,  .  .  .  and  by  the 
admission  of  evidence  or  otherwise  put  itself  in  a  position  to 
understand  and  then  to  say  what  the  words  of  the  specifi- 
cation mean  when  applied  to  such  a  subject-matter.'  In 
delivering  the  judgment  of  the  Court  of  Appeal  in  the  same 
case  (L.  E.  3  Ch.  D.  142),  L.  J.  James  said,  '  It  cannot  be 
effectually  contended  that  there  is  any  principle  to  be  applied 


154  ISTERPRKTATION  OF  SPECIFICATION 

to  the  construction  of  sp<  «  which  differs  from  that 

applicable  to  the  construction  of  every  written  instrument 
whatever.  Of  course,  in  ascertaining  the  meaning  of  words 
used,  you  endeavour  to  put  yourself  as  much  as  possible  in 
th<-  position  of  the  person  using  them.'  (See  also  Simpton  v. 
llnlli.fay,  18  \V.  l;.  r,77,  S.  C.  L.  R.  1  H.  L.  816;  Editon 
<m<i  fa  i.i.jht  C*.  v.  iiuiitiH'i.  B  i:.  r.  c.  IT 

'A  specification'  (said  Mr.  Justice  Fry  in  Wtgmann  v. 
Corcoran,  L.  B.  13  Ch.  D.  77)  'ought  to  be  read  as  a 
whole,  and  with  the  view  of  ascertaining  whether  it  fairly 
and  honestly  and  with  sufficient  exactitude  describes  the 
invention.'  And  in  I'limptnn  v.  ,S;n7Ar(L.  R.  6  Ch.  D.  11 -Ji 
L.  J.  Jamtt  said,  '  You  must  always  construe  a  claim  with 
reference  to  the  whole  context  of  a  specification/ 

'  If  any  patent  is  capable  of  more  constructions  than 
one,  the  general  rule  would  be  applied  that  you  would  put 
upon  it  that  construction  which  makes  it  a  valid  paUnt, 
rather  than  a  construction  which  renders  it  invalid.'  (Per 
L.  J.  Lin,M-u  in  Xwlham  v.  Johnson,  1  R.  P.  C.  58.)  'We 
ought  if  possible  to  construe  a  claim  so  as  to  support  a 
patent.'  (Per  Sir  B.  Jirctt,  N.  C.  55.) 

As  to  the  interpretation  of  old  specifications  which  are 
brought  forward  to  prove  anticipation,  there  is  the  im- 
portant case  of  Beits  v.  .V. //-/••*,  in  the  House  of  Lords 
(10  H.  L.  C.  117),  in  which  it  was  held  that  even  where 
tin  re  is  an  identity  of  language  in  two  specifications, 
if  such  identity  consist  merely  in  technical  terms,  it  must 
be  considered  impossible  for  the  judge  to  say  what  exact 
meaning  the  first  patentee  attributed  to  such  terms,  if  any 
long  interval  of  time,  such  as  the  interval  from  1804  to 
1848,  elapsed  between  the  two  specifications.  Under  these 
circumstances  the  judge  ought  not  to  take  upon  himself  to 
decide  as  to  the  identity  of  the  inventions,  guided  only  by 
the  similarity  of  language.  He  cannot  assume  that  the 
inventions  are  substantially  the  same  because  the  expres- 
sions employed  are  similar.  The  identity  or  dissimilarity 
is  a  fact  which  cannot  be  decided  without  hearing  evidence 
on  the  point,  and  if  the  case  is  tried  before  a  jury  it  is  a 


INTERPRETATION  OF  SPECIFICATIONS  155 

fact  for  their  decision.  And  in  a  subsequent  case  on  the 
same  patent,  Sir  W.  P.  Wood,  V.  C.,  appears  to  have  con- 
sidered that  it  is  no  ground  of  proof  of  the  effect  of  a  long 
anterior  patent  that  scientific  persons  of  the  present  day, 
with  all  the  superior  knowledge  obtained  by  the  advance  of 
science,  depose  that  they  could  produce  the  same  results 
by  the  process  disclosed  by  the  earlier  patent,  as  that  de- 
scribed in  the  subsequent  one.  (Belts  v.  De  Vitre,  11  L.  T. 
N.  s.  445.) 

Where  there  is  doubt  as  to  the  meaning  of  particular 
expressions,  competent  persons  may  be  called  for  the  pur- 
pose of  explaining  the  matter  ;  but  evidence  is  not  admis- 
sible to  explain  or  alter  the  plain  and  precise  words  of  a 
specification,  or  for  the  purpose  of  correcting  mistakes  in 
it.  (Neilson  v.  Harford,  1  W.  P.  C.  313.)  In  Elliot  v. 
Turner  (2  C.  B.  446),  it  was  held  that  the  words  of  a  speci- 
fication are  to  be  construed  according  to  their  ordinary  and 
proper  meaning,  unless  there  be  something  in  the  context 
(which  may  be  explained  by  evidence)  to  show  that  a  differ- 
ent construction  ought  to  prevail.  Of  course  it  is  allowable 
to  call  persons  of  skill  in  the  department  of  practical  art 
to  which  the  invention  belongs  for  the  purpose  of  saying 
whether  or  not  they  understand  the  specification,  and 
whether  or  not  they  could  execute  its  directions,  so  as  to 
produce  a  useful  result.  (See  C.  J.  Tindal's  remarks  in 
Walton  v.  Potter,  1  W.  P.  C.  595.) 

In  examining  a  specification  with  the  view  of  ascertain- 
ing its  sufficiency,  the  Court  will  not  take  into  consideration 
what  the  patentee  says  he  thought  of,  meant,  or  intended  at 
the  time  he  prepared  it.  The  Court  will  notice  only  what 
.  the  ordinary  workman  says.  Kayc  v.  Clmbb  (4  E.  P.  C.  289). 

Although  a  tribunal  will  look  with  extreme  jealousy  at 
any  attempt  on  the  part  of  a  patentee  to  derogate  from  his 
own  grant  after  he  has  assigned  the  patent,  yet  in  constru- 
ing the  specification  the  language  must  not  be  forced  from 
its  true  meaning  in  order  to  avoid  imposing  a  hardship  on 
the  assignee.  (Hocking  v.  Hocking,  House  of  Lords,  6  E.  P. 
C.  75.) 


156  KRPRETATIOX  OP  SPECIFICATIONS 

It  must  be  borne  in  mind  that  a  specification  will  be 
con-tnud  \\ith  n  f»  n  m-r  to  th«-  st:itt-  <>f  kimul,  ,1^,  at  tin- 
time  it  was  prepared.  Thus,  the  specification  under  a 
patent  for  a  chemical  invention  will  be  held  to  refer  to  what 
was  known  at  the  time,  and  not  to  anything  which  wa.- 
covered  subsequently.  The  language  will  not  be  deemed 
too  wide  because  it  is  extensive  enough  to  embrace  unsuit- 
able ingredients  of  later  discovery.  As  a  patentee  would 
not  be  allowed  to  secure  the  exclusive  use  of  materials  un- 
known at  the  date  of  the  patent,  although  the  words  of  the 
specification  are  sufficiently  ample  to  cover  tin  in,  it  would 
be  manifestly  unjust  to  hold  that  his  language,  having 
become  applicable  by  the  advance  of  knowledge  to  more 
than  he  contemplated,  should  render  the  patent  void,  if  it 
was  properly  limited  and  accurate  at  the  time  it  was 
employ  nl. 

In  1878  a  patent  was  obtained  for  certain  methods  of 
preparing  colouring  matters  from  naphthylamine,  a  sub- 
stance derived  from  one  of  the  products  of  the  distillation 
of  coal.  In  an  action  for  infringing  the  patent  the 
defendant  contended  that  as  two  substances  named  naph- 
thylamine (viz.  the  alpha  and  beta  forms)  were  known  to 
chemists  at  the  date  of  the  patent,  one  of  which  would  not 
answer  the  purpose,  the  specification  was  insufficient  by 
reason  of  its  not  stating  which  of  the  two  was  to  be  used. 
But  it  was  held  by  the  judge  who  tried  the  action,  and  by  the 
House  of  Lords,  that  as  the  alpha  form  (the  suitable  one) 
was  the  only  one  in  the  market  at  the  date  of  the  patent, 
the  beta  form  being  a  costly  substance  known  only  to  a  few 
chemists  as  a  laboratory  product,  the  specification  was 
sufficiently  explicit.  (Badische  Anilin  vnd  Soda  Fabrik  v. 
/  ;//x/,-iw,  2  R.  P.  C.  78 ;  S.  C.  House  of  Lords,  4  R.  P.  C. 
463.)  See  also  Crossley  v.  Bcrcrlcy  (3  C.  &  P.  515). 

Where  a  specification  has  received  an  interpretation  in 
the  Court  of  Appeal  and  afterwards  goes  there  again  on 
appeal  from  the  decision  in  another  action  against  another 
defendant,  the  construction  previously  put  upon  it  will  be 
adopted  and  will  not  be  allowed  to  be  questioned.  (Auto- 


INTERPRETATION  OF  SPECIFICATIONS  157 

matic  Weighing  Machine  Co.  v.  Combined  Weighing  Machine 
Co.,  6  E.  P.  C.  367.) 

Construction  of  Claims. — '  You  must  always  construe  a 
claim  with  reference  to  the  whole  context  of  a  specification.' 
(Per  Sir  W.  M.  James,  L.  J.,  in  Plimpton  v.  Spiller,  L.  E.  6  Ch. 
D.  412.)  '  Every  claim  in  every  patent  must  be  read  and 
construed  with  reference  to  the  specification,  and  not  as 
if  the  claim  was  an  isolated  sentence  having  no  connection 
with  or  reference  to  what  precedes  it.'  (Edison  &  Swan 
United  Electric  Light  Company  v.  Woodhouse,  Court  of 
Appeal,  4  E.  P.  C.  107,  and  see  Kaye  v.  Chubb,  5  E. 
P.  C.  641.) 

As  to  the  construction  of  a  claim  which  can  be  read  in 
two  senses,  one  of  which  would  make  the  patentee  appear 
to  claim  something  which  was  well  known  and  in  common 
use,  see  Cropper  v.  Smith,  Court  of  Appeal,  W.  P.  C.  p.  81, 
and  Westinghouse  v.  Lancashire  and  Yorkshire  Railway 
Company,  ibid.  p.  98.  And  see  what  fell  from  Tindal,  C.  J.,m 
Haworth  v.  Hardcastle,  1  W.  P.  C.  484.  If  one  construc- 
tion would  imply  that  the  claim  is  practically  a  repetition 
of  what  has  gone  before  and  entirely  superfluous,  yet  so 
long  as  it  does  not  seek  to  enlarge  the  monopoly  beyond 
what  the  patentee  is  entitled  to,  it  will  not  make  the  patent 
invalid.  (Plimpton  v.  SpiUer,  L.  E.  6  Ch.  D.  412.) 

It  was  decided  by  the  House  of  Lords  in  The  British 
Dynamite  Company  v.  Krebs  (Goodeve's  cases,  p.  88)  that 
an  appendant  claim  to  something  old  did  not  vitiate  a 
patent.  In  this  case  the  patentee  had  claimed  the  manu- 
facture of  the  dynamite  which  was  found  to  be  new,  and 
also  claimed  the  means  of  firing  by  special  ignition  as 
described.  Some  of  these  means  of  firing  being  old  and 
well  known  as  applied  to  other  explosives,  the  House  of 
Lords  construed  this  claim  as  being  only  appendant  to 
dynamite,  and  upheld  the  patent.  It  is  not,  however, 
advisable  for  inventors  to  make  claims  of  this  kind,  which 
if  held  to  extend  the  patent  would  invalidate  it,  and  if  held 
not  to  extend  it  are  simply  useless. 

The  following  decisions  have  reference  to  the  interpre- 


158  ilRPRETATION  OF  SPECIFICATIONS 

tation  of  '  claims : '— Kay  v.  Marshall  (2  W.  P.  C.  89) ; 

r  v.  l.,-,itlt,-r  (X  ,Tur.  N. 8.811,  S.  < '.  in  error  8  E.  and  B. 
1004);   I'.ilm.r  v.  n'ag$ta/  (9  Exch.    !'.' • 
Manffnall  (3  C.  B.  496) ;  Tetn]>/>  t-m  v.  .I/./ .•-..-•-,..     1  II.  L. 
C.  595) ;  Sdltr*  v.  Dickinson  (5  Exch.  812 >  //iV/i//* 

(8H.  L.  C.  550);  Thomas  v.  /  I  ft      -.   ,.  -71    ; 

Dangerfitld  v.  Jorw*  (18  L.  T.  N.  8.  142) ;  ITtowa*  v.  I: 
(L.  it.  1  C.  P.  192)  ;  Jordan  v.  Moore  (L.  R.  1  C.  P.  624) ; 
(L.  R.  8  Eq.  497) ;  Hink*  \ . 

!L.  R.  4  Ch.  D.  607);   Wriyht  v.  Ilitrl,r,.,-k  (L.  I;.  :. 
Ex.  78). 


OPPOSITIONS  TO  THE  GRANT  OF  PATENTS  159 


CHAPTEE  XI. 

OPPOSITIONS   TO    THE    GRANT    OF    PATENTS. 

AN  inventor's  application  for  a  patent  may  be  opposed 
under  the  eleventh  section  of  the  Act  of  1883,  amended  by 
the  Act  of  1888,  which  enacts  that  any  person  may  at  any 
time  within  two  months  from  the  date  of  the  advertisement 
of  the  acceptance  of  a  complete  specification  give  notice  at 
the  Patent  Office  of  opposition  to  the  grant.  The  opponent 
is  restricted  by  the  Acts  of  1883  and  1888  to  three  grounds : 
viz.  (i)  that  the  applicant  had  obtained  the  invention  from 
him,  or  from  a  person  of  whom  he  is  the  legal  representa- 
tive ;  or  (ii)  that  the  invention  had  been  patented  in  this 
country  on  an  application  of  prior  date ;  or  (iii)  that  the 
complete  specification  describes  or  claims  an  invention  other 
than  that  described  in  the  provisional  specification,  and 
that  such  other  invention  forms  the  subject  of  an  appli- 
cation made  by  the  opponent  in  the  interval  between  the 
leaving  of  the  provisional  specification  and  the  leaving  of 
the  complete  specification.  The  last  ground  was  substituted 
by  the  4th  sect,  of  the  Patents  Act,  1888.  Where  such 
notice  is  given  the  Comptroller  will  give  notice  of  the  op- 
position to  the  applicant,  and  will,  on  the  expiration  of 
the  two  months,  after  hearing  the  applicant  and  the 
person  so  giving  notice,  if  desirous  of  being  heard,  decide 
on  the  case,  but  subject  to  appeal  to  the  law  officer. 

As  to  the  procedure  in  cases  of  opposition  before  the 
Comptroller,  see  rules  34-44  of  the  Patents  Eules,  1890. 
The  notice  of  opposition  must  state  the  grounds  of  opposi- 
tion. When  a  ground  of  opposition  is  that  the  invention 
has  been  previously  patented,  the  title,  number,  and  date  of 


160  OPPOSITIONS  TO  THE  GRANT  OF  PATENTS 

the  alleged  prior  specification  must  be  duly  specified.  Th«- 
opponent's  evidence  in  8ii]>]><>rt  of  his  case  and  the  appli- 
cant'-  i  \  id  nice  in  reply  must  be  in  tin-  form  of  statutory 
declarations.  At  the  hearing  before  the  Comptroller  no 
matter  can  be  gone  into  which  has  not  been  stated  in  tl it- 
notice  of  opposition.  He  may  allow  amendments  in  n« 
of  opposition  at  the  hearing.  (See  Patents  llul»-s,  IH;»O, 
R.  1C, :  /.,//.-,  'x  .l/.y./»Y,/r  •,  -J  llriff.  P.  C.  »•'•  ft  .ly»y//- 

cat'mn,  f»  R.  P.O.  :>«H.) 

"Win- re  a  notice  of  the  hearing  before  the  Comptroller 
did  not  reach  the  opponent's  agent  and  the  case  was  decided 
against  the  opponent  in  his  absence,  the  Comptroller 
gested  that  the  opponent  should  appeal,  and  this  being  done 
the  law  officer  referred  the  case  back  to  the  Comptroller 
for  rehearing.  (Warman'g  Apjilicntion,  2  Griff.  P.  C.  48.) 

•  Appeal  t»  thf  Ln ir  Officer. — When  a  person  intends  to 
appeal  to  the  law  officer  against  the  Comptroller's  decision, 
he  must  file  in  the  Patent  Office  a  notice  of  his  intention, 
within  fourteen  days  from  the  date  of  the  decision.  (See 
the  Rules  of  the  Law  Officers  in  the  Appendix). 

Win  n  the  Comptroller  requires  an  amendment  to  be 
made,  but  does  not  at  once  settle  the  words  of  the  amend- 
ment, it  is  the  practice  to  regard  the  time  for  appealing  to 
the  law  officer  as  dating  from  the  day  of  forwarding  to 
the  opponent  a  copy  of  the  amendment  approved  by  the 
Comptroller.  (Ch«n,U,-r'g  Patent,  1  Griff.  P.  C.  278). 

When  a  notice  of  appeal  is  given  by  one  party,  the 
other  party  will  not  be  allowed  to  question  at  the  hearing 
another  part  of  the  Comptroller's  decision  unless  he  has 
also  given  notice  of  appeal,  or  has  obtained  the  consent  of 
the  other  side.  (Baintmc'g  Patent,  5  R.  P.  C.  287.)  When 
the  appellant  is  one  of  the  opponents,  it  is  the  pra< 
going  beyond  the  rule,  to  send  him  notice  of  the  hearing 
before  the  law  officer. 

At  the  hearing  the  parties  may  appear  in  person,  or  be 
represented  by  counsel,  solicitors,  or  patent  agents.  The 
onus  of  proof  lies  on  the  opponent.  (Exparte  Sheffield,  L.  R. 
8  Ch.  237.)  The  more  important  decisions  of  the  law 


OPPOSITIONS  TO  THE  GRANT  OF  PATENTS  161 

officers  are  now  officially  reported,  so  that  more  uniformity 
may  be  looked  for  than  formerly,  when  it  was  not  unusual 
to  find  different  law  officers  holding  different  views  on  the 
same  points.  They  are  always  reluctant  to  stop  patents, 
because  applicants  cannot  appeal  from  their  decisions ;  but 
if  the  law  officer  entertains  no  doubt  that  the  invention 
has  been  anticipated  by  a  prior  patent  he  will  refuse  the 
application.  (Aire  and  Colder,  d-c.,  Application,  5  R.  P.  C. 
345 ;  Waller  and  Ratcliff's  Application,  5  R.  P.  C.  347 ; 
Daniel's  Application,  5  R.  P.  C.  418.) 

The  infringement  of  an  existing  patent  was  formerly  not 
considered  a  ground  for  refusing  an  application,  for  the 
reason  that  it  was  possible  that  the  later  invention  covered 
a  valuable  improvement,  and  according  to  the  present 
practice  if  the  later  invention  is  an  improvement  on  an 
invention  under  an  existing  patent,  the  application  must  be 
distinctly  made  for  the  improvement  separate  from  the 
already  patented  invention.  (Hoskins  Patent,  1  Griffin, 
P.  C.  291.) 

Under  the  old  system,  if  the  law  officer  was  at  all 
doubtful  as  to  the  effect  of  the  evidence  before  him,  he 
would  allow  the  patent  to  proceed,  that  the  question 
might  be  tried  in  a  court  of  law.  In  the  case  of  Dance's 
Patent  (P.  M.  J.  vol.  vi.  2nd  series,  298),  Atherton,  A.  G. 
(1861),  finally  gave  his  judgment  as  follows: — 'I  allow 
this  patent  to  proceed,  thinking  that  the  question  of  fact, 
whether  Dance  or  Stevens  invented,  and  the  mixed  ques- 
tion of  fact  and  law,  whether  the  invention  had  been 
made  public  before  Dance  applied  for  protection,  admit 
of  too  much  doubt  to  justify  a  law  officer  in  stopping  the 
patent.' 

And  so  in  other  cases  wrhere  much  doubt  hung  about 
the  matter ;  for  example,  where  the  evidence  was  conflicting, 
and  the  law  officer  was  unable  to  decide  which  side  was 
speaking  the  truth,  he  would  allow  the  application  to  pro- 
ceed, as  was  done  by  Giffard,  8.  G.,  May  6,  1876,  in  the 
matter  of  Liddell's  Patent,  No.  3872,  1875. 

And  in  He  Hiissell's  Patent  (2  De  G.  and  J.  130),  where 

M 


1G2  OPPOSITIONS  TO  THE  GRANT  OF    i 


the  novelty  of  tin-  inv«  ntion  was  contested,  I 
<  ..  thought  that  in  such  a  case  it  was  better  to  run  tin- 
risk  of  putting  the  party  opposing  to  the  costs  of  ult« 
proceedings  than  to  withhold  the  Seal,  for  the  obvious 
reason  that  the  former  course,  if  wrong,  would  only  create 
a  remedial)!*-  injury,  whilst  the  latter  course,  if  wrong, 
would  cause  an  irremediable  injury.  (See  also  Re  ToUon't 
/,»;  I  ).-(i.  M.an.K,.  l-J-J  :  /  ifi  L.  J. 

Ch.   I.'  I  :   /,'.  ,SJ;/J/IX,.M  and  Isaac's  1  Jl  L.  T.  o.  s.  81  ; 

-!„  Mt*4  I'at.  nt,  3  De  G.  and  J.  528.) 
And  under  the  new  law  it  is  the  well-recognised  prac- 
hiit  if  there  is  doubt  as  to  the  applicant's  right  to  a 
patent  the  question  hhwild  be  determined  in  his  favour, 
and  tin-  patent  sealed.     (Chandler's  Patent.  I  (iriff.  P.  C. 
270;    HY/r/r*  Patent,  1  Griff.  P.  C.  800  ;   Jones'   J 
Griff.  P.  C.  88.)     It  is  no  part  of  the  law  officer's  duty  to 
decide  the  validity  or   invalidity  of  patents.     (.\ 
I  '<it>  nt,  5  R.  P.  C.  277.)    If  a  strongly  controverted  question 
of  scientific  anticipation  should  arise,  the  patent  will  not  be 
stopped.     (Lake's  Patent,  6  R.  P.  C.  548.) 

The  first  ground  of  opposition  mentioned  in  the  Act  is 
that  the  applicant  had  obtained  the  invention  from  the 
opponent,  or  from  a  person  of  whom  he  is  the  legal  repre- 
sentative. The  fact  that  a  workman  has  assisted  his 
master  in  improving  the  details  of  the  machine  invented  by 
the  master  and  sought  to  be  patented  by  him  affords  no 
ground  of  opposition  to  the  grant  of  a  patent  to  the  master. 
d>,irl,l  ,('•  }\'u<»ll.ii.  2  Griff.  P.  C.  26.)  As  to  the  words 
'  legal  representative,'  it  was  held  that  an  agent  regularly 
appointed  by  power  of  attorney  does  not  fulfil  the  require- 
ment. (Edmund's  Patent,  1  Griff.  P.  C.  281.) 

The  second  ground  of  opposition  is  that  the  invention 
had  been  patented  in  this  country  on  an  application  of 
prior  date. 

The  opponent  must  be  a  person  who  has  a  real  interest 
in  the  prior  patent,  or  a  person  who  was  the  originator  of  the 
invention  sought  to  be  patented.  A  patent  agent  does  not 
fall  within  the  description.  (Heath  d  Frost's  Patent,  1 


OPPOSITIONS  TO  THE  GKANT  OF  PATENTS     163 

Griff.  P.  C.  289.     And  see  Hookham's  Application,  2  Griff. 
P.  C.  32.) 

A  person  was  allowed  to  be  heard  on  the  ground  that  he 
had  had  an  interest  under  a  lapsed  prior  patent,  alleged  to 
anticipate  the  applicant's  invention,  and  had  manufactured 
under  it.  (Glossop's  Patent,  1  Griff.  P.  C.  285.)  But  the 
simple  fact  that  a  person  had  manufactured  under  a  prior 
patent  is  not  sufficient.  (MacEvoy's  Patent,  5  E.  P.  C. 
285.)  Nor  is  it  enough  to  allege  that  the  opponent  is  going 
to  work  the  invention  under  the  prior  patent.  (Bairstow's 
Patent,  5  E.  P.  C.  287.) 

'Patented  in  this  country  on  an  application  of  prior  date.' 
— An  opponent  was  allowed  to  be  heard  although  the  prior 
patent  had  expired.  (Lancaster's  Patent,  1  Griff.  P.  C.  293.) 
But  if  the  invention  has  been  only  described  but  not 
claimed,  it  has  not  been  patented  in  this  country.  (Von 
Bitch,  2  Griff.  P.  C.  40.)  And  an  invention  which  has  only 
received  provisional  protection  cannot  be  cited  against  the 
applicant.  (Bailey's  Patent,  1  Griff.  P.  C.  269 ;  Paterson's 
Patent,  1  Griff.  P.  C.  296.)  But  a  person  whose  complete 
specification  has  been  accepted  at  the  Office,  although  his 
patent  has  not  been  issued,  is  entitled,  under  section  15 
of  the  Act  of  1883,  to  be  heard  in  opposition.  (L'Oiseau 
d  Pierrard,  2  Griff.  P.  C.  36.) 

Where  the  opponent  proves  that  the  invention  is  de- 
scribed and  claimed  in  the  complete  specification  under 
a  prior  patent,  it  is  no  answer  to  say  that  the  invention  is 
not  comprised  in  the  provisional  specification  of  the  former 
patent  (Green's  Patent,  1  Griff.  P.  C.  286) ;  or  that  the 
claim  in  the  complete  specification  goes  beyond  the  title  and 
provisional.  (Newman,  2  Griff.  P.  C.  40 ;  see  also  Hay- 
thornthivaite's  Application,  1  E.  P.  C.  70.) 

Where  it  is  clear  that  a  claim  is  covered  by  an  earlier 
patent  the  applicant  will  be  ordered  to  strike  it  out.  (Hall 
&  Hall's  Patent,  5  E.  P.  C.  283 ;  Webster's  Patent,  6  E.  P.  C. 
163.)  And  an  applicant  is  frequently  required  to  state  in  his 
specification  that  he  is  aware  of  a  given  patent  and  that  he 
does  not  claim  anything  which  is  described  and  claimed  in  the 

M  2 


164  OPPOSITIONS  TO  THE  GRANT  OF  PATBKT8 

specification  un<l«  i  i;  •  >  >.  ~>  I:.  I'.  <  .  -J71  : 

Goznetit   .\}'i'li>. iti,.n.   :.    I;.    I'.   <  .   .V.»7  :    l.yndr't  I 
R.  P.  C.  668.  pin  (1  i»iitnit  is  some- 

times required  to  be  inserted.      (Hair*  ]'<it-nt.:,  I;,   i 
288.)     In  the  cases  of  <;».•->  nn.t  Barrott  :.  I:.  I1. 

C.  812)  ;  and  'i  Apjilicntiu,,  i.l  K.  1'.  C.  184),  a  dis- 

claimer of  a  i>rim-ij)le  was  ordered  to  be  inserted.  Tin- 
reference  to  an  earlier  specification  must  not  put  a  con- 
struction on  the  latter.  (Ath,-rtnn'*  1'tit.nt,  •;  i:.  r.  C.  547.) 

lin-nl    .\]>i>li<;iti,,,ig. — When  two  contending  applim 
for  a  patent  claimed  to  be  indejx  n«l. nt  cont<  ni]>oraneouB 
discoverers,  the  law   officer   usually  refused  to  allow  the 
grant  to  issue  to  either  separately,  but  offered  it  to  the  two 
jointly.     And  so  in  a  case  of  opposition  before  Lord  ( 
n-orth.  ('.,  where  a  master  and  his  foreman  had  both  in- 
vt 'ii ted  certain  improvements,  for  which  the  master  alone 
applied  for  a  patent,  but  was  opposed  by  the  foreman  on  the 
ground  of  prior  invention  by  the  latter,  the  patent  was 
ordered  to  be  vested  in  trustees  for  the  benefit  of  both. 
Rum-ir*  r,it,-nt,  2  De  G.  &  J.  180.)     Where  there  was 
ground  for  supposing  that  the  applicant  owed  part  of  the 
invention  to  the  opponent,  the  Comptroller  decided  to  seal 
a  patent  for  the  invention  to  the  two  as  joint  inventors. 
••nt,  1  Griff.  P.  C.  279.) 

Evans's  application  was  opposed  by  Cutting  on  the 
ground  that  the  former  had  obtained  the  invention  from  the 
latter.  Cutting  afterwards  made  an  application  in  respect 
of  substantially  the  same  invention,  but  that  application 
was  not  opposed  by  Evans.  As  it  appeared  that  the  t\\o 
had  been  jointly  experimenting  on  the  invention,  >'//•  /.'. 
A.  G.,  directed  that  a  patent  be  issued  to  Evans 
on  condition  that  he  assigned  one  half  share  to  Cutting, 
and  that  Cutting  should  assign  a  half  share  of  his  patent  to 
Evans,  and  if  Cutting  refused  to  assign,  then  Evans's  patent 
was  to  be  sealed  forthwith.  There  being  a  difficulty  in 
carrying  out  this  arrangement,  the  law  officers  afterwards 
directed  that  Evans's  patent  should  not  be  sealed,  but  that 
Cutting  should  assign  one  half  share  of  his  patent  to  Evans, 


OPPOSITIONS  TO  THE  GRANT  OF  PATENTS  165 

the  assignment  to  contain  provisions  as  to  payment  of  the 
patent  fees.  (Evans  cO  Otway's  Patent,  I  Griff.  P.  C.  279. 
And  see  Garthwaite's  Patent,  1  Griff.  P.  C.  284;  Luke's 
Patent,  1  Griff.  P.  C.  294.) 

Where  an  employer  opposed  the  application  of  a  person 
who  was  or  had  been  in  his  service,  on  the  ground  that 
the  invention  sought  to  be  patented  probably  resulted  from 
investigations  or  experiments  directed  and  paid  for  by  the 
employer,  the  law  officer,  being  satisfied  of  the  bona  fides 
of  the  opposition,  granted  his  warrant  on  condition  that 
the  applicant  should  submit  his  provisional  specification 
to  the  inspection  of  the  opponent,  and  should  strike  out 
such  portions  of  it  as  contained  matters  of  the  kind  referred 
to  by  the  opponent.  This  was  done  by  Coleridge,  S.  G.,  in 
the  case  of  Healey's  Application,  No.  85,  1872,  and  also  in 
the  case  of  Conniff's  Application,  No.  3895,  1872. 

In  a  case  where  there  were  rival  applications  for  a 
patent  for  the  same  invention,  and  there  was  a  conflict  of 
evidence  as  to  priority  of  discovery,  the  patent  was  awarded 
by  the  Lord  Chancellor  to  him  who  was  first  in  a  position 
to  seal  it.  (In  re  Loice's  Patent,  25  L.  J.  N.  s.  454.)  But 
now  priority  of  sealing  will  confer  no  advantage  on  a  later 
applicant,  inasmuch  as  by  section  13  of  the  Act  of  1883 
a  patent  must  be  dated  and  sealed  as  on  the  day  of  the 
application. 

In  cases  of  rival  applications  where  the  law  officer  was 
satisfied  that  one  of  the  applicants  was  entitled  to  one  part 
of  the  invention,  whilst  the  other  could  more  fairly  claim 
another  part,  he  issued  his  warrants  to  both,  limiting  the 
provisional  specifications  accordingly.  This  was  done  by 
Coleridge,  S.  G.,  in  the  matter  of  Craig  and  Macfarlane's 
Applications.  (P.  M.  J.  vol.  iv.  3rd  series,  366.)  Macfarlane 
had  applied  for  Letters  Patent  for  '  Improvements  in  rollers 
for  paper-making  machines,'  and  obtained  the  usual  pro- 
visional protection.  He  claimed  to  have  invented  both  a 
*  coutch-roll '  and  an  '  underpress  roller  '  for  a  paper-making 
machine.  The  application  was  opposed  by  Craig,  on  the 
ground  that  he  was  the  first  inventor  of  an  underpress 


166  OPPOSITIONS  TO  THE  GRANT  OP  PATENTS 

roller,  covered  with  vulcanite  and  vulcanised  india-rul 
which  formed  part  of  Macfarlane's  provisional  specification, 
and  for  which  ('rain  had  also  applied  an«l  obtained  the 
usual  protection.  Craig  contended  that  Macfarlane,  who 
had  obtained  the  matt-rial  for  the  covering  of  the  roll. T- 
from  a  rubber  company,  was  at  that  time  in  Craig's  em- 
ployment,  and  that  he  had  only  applied  for  his  patent  after 
thr  rollers  had  In -t-n  experimented  with  l>y  Craig  at  one  of 
his  mills,  and  had  been  found  successful.  Craig  submitted 
that  the  experiments  adduced  hy  Macfarlane  had  only  re- 

nee  to  the  coutch-roll  of  the  machine,  and  that  Mac- 
farlane had  not  proved  that  he  had  ever  experimented  on 
the  underpress  rollt-r.  (',<l>-n<Li'-,  S.  '/'.,  decided  to  grant 
his  warrant  for  the  sealing  of  Macfarlane's  patent  for  tin- 
coutch-roll  alone,  and  to  grant  his  warrant  for  the  sealing 
of  Craig's  patent  for  the  underpress  roller. 

In  the  case  of  Kr  pnrt>-  ]{<!?•  /. '  <l<intr  (L.  R.  : 
577),  where  the  second  applicant  had  procured  the  Great 
Seal  without  having  l>een  opposed,  before  the  first  applicant 
petitioned  for  the  Seal.  /."/•</  H<itli>  rl>->/,  ('.,  only  permitted 
the  first  applicant  to  include  in  his  patent  so  much  of  the 
invention  as  was  not  covered  by  the  patent  already  sealed, 
and,  moreover,  he  ordered  the  first  applicant's  patent  to 
bear  date  after  the  second  applicant's.1 

And  so,  where  the  law  officer  had  reported  that  part  of 

an  invention  for  which  a  patent  was  sought  was  the  subject 

of  an  existing  patent,  the  Lord  Chancellor  ordered  that 

part  to  be  excluded  from  the  new  patent.     (Ex parti-  Man- 

r,  L.  R.  6  Ch.  273.) 

The  principle  of  these  cases  was  that  the  Crown  would 

1  In  Ex  parte  Dering  (13  Ch.  D.  393),  where  two  applicants  had 
applied  on  the  same  day  for  the  same  invention.  Lord  Cainu,  C.,  re- 
fused to  follow  the  decision  in  Ex  parte  Batt*  &  fledgaU  as  to  the  post- 
dating of  the  patent,  on  the  ground  that  the  Legislature  intended  patentees 
to  have  the  full  term  of  protection  given  bj  provisional  specification,  and 
ordeied  the  applicant's  patent  to  be  sealed,  and  dated  as  of  the  day  of 
application,  although  the  sealing  was  opposed  by  the  second  applicant,  who 
had  already  had  the  Great  Seal  affixed.  (See  the  remarks  on  these  cases  by 
Mr.  Justice  Kekturich  in  Kurtz  v.  Spenct,  5  B.  P.  C.  178.) 


OPPOSITIONS  TO  THE  GRANT  OF  PATENTS     167 

riot  grant  a  second  patent  in  derogation  of  a  former  grant, 
and  would  not  assume,  without  scire  facias,  that  the  first 
patent  was  void.  See  Ex  parte  Bailey  (L.  E.  8  Ch.  61) 
&nd,Ex  parte  Henry  (L.  E.  8  Ch.  167,  169). 

And  this  principle  has  been  kept  in  view  by  the  Comp- 
troller and  the  law  officers  with  regard  to  applications 
under  the  Act  of  1883,  disclaimers,  as  already  stated,  being 
frequently  directed  to  be  inserted  in  specifications,  referring 
to  an  earlier  patent. 

Mala  Fides. — Under  the  old  law,  if  a  case  of  mala  fides 
could  be  made  out,  the  Chancellor  would  interfere  to  pre- 
vent injustice.  Thus,  where  a  servant  having  filed  a  pro- 
visional specification,  his  master  afterwards  filed  a  pro- 
visional specification  for  the  same  invention,  and  then 
after  obtaining  a  patent,  a  complete  specification,  there 
was  grave  suspicion  that  the  master  had  surreptitiously 
obtained  a  knowledge  of  the  servant's  invention,  and  there- 
fore the  servant's  patent  was  ordered  to  be  sealed  and 
dated  as  of  the  day  of  his  application,  notwithstanding  the 
existence  of  the  master's  patent.  (Ex  parte  Scott  &  Young, 
L.  E.  6  Ch.  274.)  The  consequence  of  this  would  be  that 
by  virtue  of  section  24  of  the  Patent  Act  of  1852  acts  done 
under  the  patent  first  sealed  would  be  an  infringement  of 
the  patent  with  an  earlier  date.  (See  Saxby  v.  Hennett, 
L.  E.  8  Ex.  210.) 

When  the  opposition  was  founded  on  a  prior  patent 
granted  to  the  opponent,  and  the  applicant  alleged  that 
the  invention  for  which  that  patent  was  granted  had  been 
communicated  by  him  in  confidence  to  the  patentee  who 
had  fraudulently  obtained  a  patent  for  it,  the  Lord  Chan- 
cellor directed  the  applicant's  patent  to  be  sealed,  so  as  to 
give  him  an  opportunity  of  trying  the  question  in  a  court 
of  law.  EC  Vincent's  Patent  (L.  E.  2  Ch.  D.  341).  And 
see  section  35  of  the  Patents  Act  1883. 

And  where  it  was  shown  that  the  applicant  had  derived 
the  principle  of  the  invention  from  a  rival  applicant,  the 
Seal  would  be  refused  to  the  former. 

In  April  1853  Hadden  made  application  for  a  patent 


168  OPPOSITIONS  TO  THE  GRANT  OF  PATENTS 

for  a  method  of  making  gun -curt  ridges.  His  plan  obviated 
th'  necessity  of  biting  off  the  end  of  the  cartridge  when 
the  gun  was  being  loaded,  and  its  main  feature  consisted 
in  making  it  weaker  at  one  end,  BO  that  \\h<  n  rammed 
down  it  burst  open  and  the-  jx>\v<l< -r  ran  into  the  breech  of 
the  pun.  Aft<  r  Iml^in^  the  provisional  specification,  Ha.: 
had  some  conversation  with  Lott.  to  \\h..in  he  described 
tin  general  features  of  the  invention.  Shortly  afterwards 
Lott  applied  for  a  patent  for  an  invention  hauir:  a  similar 
object,  and  his  specification  described  a  collapsing  chamber  in 
the  cartridge  to  hold  the  charge  of  powder,  which  chamber 
would  be  burst  open  by  the  action  of  the  ramrod.  This 
method  of  carrying  out  the  general  idea  was  different  from 
the  one  adopted  byHadden.  Tin-  Solicitor-*  i.-neral,  having 
issued  his  warrant  for  the  sealing  of  Lett's  patent,  the  case 
was  carried  before  the  Lord  Chancellor,  who  held  that  the 
t\vo  inventions  were  substantially  the  same,  the  material 
part  in  each  being  that  one  end  of  the  cartridge  was  made 
weaker  than  the  other  with  a  view  to  its  bursting  under 
the  action  of  the  ramrod.  Holding  that  Lott  had  obtained 
this  idea  from  Hadden,  the  Chancellor  refused  to  seal  Lott's 
patent.  (See  also  3/nrx/m//'*  Applicati,,,,,  5  R.  P.  C.  661.) 
//.  rxrhrll,  S.  a.,  in  the  case  of  Macfarlane's  Patent 
<March  1888),  opposed  by  the  Animal  Charcoal  Company, 
Limited,  declined  to  issue  the  warrant  under  the  following 
circumstances.  Macfarlanc  was  manager  of  the  company 
and  Jones  was  a  consulting  engineer,  and  Ingham  a  chemist 
also  employed  by  the  company.  It  was  asserted  that 
Mac  far  lane  was  not  the  inventor  of  his  alleged  invention, 
but  that  it  was  based  partly  on  suggestions  made  by  Jones 
and  partly  on  suggestions  made  by  Ingham,  all  of  which 
had  been  experimented  upon  in  the  company's  works  under 
Macfarlane's  management.  Although  Macfarlane  showed 
at  the  hearing  that  he  had  obtained  an  American  patent 
for  the  invention  in  his  own  name  during  the  pending  of 
the  opposition,  the  law  officer,  believing  that  the  sugges- 
tions had  been  originally  made  by  Jones  and  Ingham, 
declined  to  grant  the  patent. 


OPPOSITIONS  TO  THE  GRANT  OF  PATENTS     169 

In  the  case  of  Griffin's  Applications  (6  R.  P.  C.  296),  the 
law  officer  refused  to  seal  the  applicant's  patents,  as  there 
was  strong  reason  for  believing  that  the  applicant  had 
acquired  his  knowledge  of  the  inventions  from  the  opponent. 

In  the  case  of  Abel's  Application,  No.  1908,  1876, 
opposed  by  De  Muller,  August  2,  1876,  Giffard,  S.  G.,  held 
that  he  could  not  take  any  official  notice  of  alleged  fraudu- 
lent proceedings  abroad  on  the  part  of  the  foreign  com- 
municator of  Abel's  invention  as  against  the  opponent. 
He  could  not  look  behind  the  applicant  Abel,  who,  as  the 
first  importer  or  introducer  of  the  invention  into  Her 
Majesty's  realm,  was  in  law  the  inventor.  And  this  course 
was  followed  in  Edmund's  Patent,  1  Griff.  P.  C.  281 ;  and 
Lake's  Patent,  5  R.  P.  C.  415. 


COSTS. 


The  Comptroller  has  no  authority  to  award  costs ;  but  the 
law  officers  have  power,  under  the  thirty-eighth  section  of  the 
Act  of  1883,  to  order  costs  to  be  paid  by  either  party,  and  any 
such  order  may  be  made  a  rule  of  Court.  See  the  Law 
Officers  Rules,  11  and  12.  As  a  general  rule  costs  follow 
the  event,  but  there  may  be  special  circumstances  to  in- 
fluence the  law  officer.  It  is  to  be  hoped  that  in  any  future 
legislation  power  will  be  given  to  the  Comptroller  to  deal 
with  costs  of  oppositions.  It  seems  to  be  but  just  that  in 
cases  of  frivolous  and  unsuccessful  oppositions  the  oppo- 
nents should  pay  the  costs  of  the  applicant. 


170     THE  I'ATKNT:  ITS  DATE,  DURATION,  AKD  EXTENT 


CHAlTF.l;    XII. 
THE  PATENT:  ITS  DATE,  DURATION,  AND  EXTENT. 

I1,  v  tin*  twelfth  section  of  the  Patents  Act  of  1883  it  is  enacted 
that  if  there  is  no  opposition  to  the  grant  of  a  patent,  or  in 
case  of  opposition  if  the  determination  is  in  favour  of  the 
grant,  the  Comptroller  shall  cause  a  patent  to  be  sealed 
with  the  seal  of  the  Patent  Office,  and  a  patent  so  sealed 
shall  have  the  same  effect  as  if  it  were  sealed  with  the  Great 
Seal  of  the  I'niti  il  Kingdom.  It  is  further  directed  that  a 
patent  shall  be  sealed  as  soon  as  may  be,  and  not  after  the 
expiration  of  fifteen  months  from  the  date  of  application, 
except  (1)  where  the  sealing  has  been  delayed  by  an  appeal 
to  the  law  officer,  or  by  opposition  to  the  grant,  in  which 
case  the  patent  may  be  sealed  at  such  time  as  the  law 
officer  may  direct;  and  (2)  if  the  applicant  should  die 
before  the  expiration  of  the  fifteen  months,  in  which  case 
the  patent  may  be  granted  to  his  legal  representative,  and 
sealed  at  any  time  within  twelve  months  of  the  applicant's 
death. 

But  by  the  third  section  of  the  amending  Act  of  1885  it 
was  enacted  that  a  complete  specification  may  be  left  and 
accepted  within  such  extended  times,  not  exceeding  one 
month  and  three  months  respectively,  after  the  said  nine 
and  twelve  months  respectively,  as  the  Comptroller  may,  on 
payment  of  the  prescribed  fee,  allow,  and  where  such  ex- 
tension of  time  has  been  allowed,  a  further  extension  of 
four  months  after  the  said  fifteen  months  shall  be  allowed 
for  the  sealing  of  the  patent ;  and  the  principal  Act  shall 
have  effect  as  if  any  time  so  allowed  were  added  to  the  said 
period  specified  in  the  principal  Act.  Applications  for 


THE  PATENT:   ITS  DATE,  DURATION,  AND  EXTENT      171 

enlargement  of  time  must  state  on  what  circumstances,  and 
upon  what  grounds  the  enlargement  is  applied  for.  (See  the 
Forms  U  and  V.) 

By  the  thirteenth  section  of  the  Act  of  1883  it  is  directed 
that  every  patent  shall  be  dated  and  sealed  as  of  the  day  of 
the  application.  The  same  section  provides  that  in  case  of 
more  than  one  application  for  a  patent  for  the  same  inven- 
tion, the  sealing  of  a  patent  on  one  of  those  applications 
shall  not  prevent  the  sealing  of  a  patent  on  an  earlier 
application.  This  proviso  was  intended  to  apply  to  such 
cases  as  Ex  parte  Bates  &  Redgate  (L.  E.  3  Ch.  577)  and  Ex 
parte  Manceaitx  (L.  E.  6  Ch.  D.  274) ;  see  these  cases  cited 
in  the  chapter  on  Oppositions. 

In  the  event  of  the  death  of  an  applicant  for  a  patent 
before  the  sealing  of  the  patent,  it  may  be  granted,  under 
section  12  subsection  (3  I)  of  the  Act  of  1883,  to  his  legal 
representative,  and  sealed  at  any  time  within  twelve  months 
after  the  death  of  the  applicant.  In  such  a  case  applica- 
tion must  be  made  to  the  Comptroller,  who  will  require  to 
be  furnished  with  an  official  copy  of  or  extract  from  the  will 
or  letters  of  administration,  in  proof  of  the  applicant's  title 
as  legal  representative. 

By  the  eighty-sixth  section  of  the  Patents  Act  of  1883 
the  Comptroller  may  refuse  to  grant  a  patent  for  an  inven- 
tion, the  use  of  which  would,  in  his  opinion,  be  contrary  to 
law  or  morality. 

The  sixteenth  section  of  the  Act  of  1883  directs  that 
every  patent  when  sealed  shall  have  effect  throughout  the 
United  Kingdom  and  the  Isle  of  Man,  leaving  out  the 
Channel  Islands,  which  have  been  previously  included. 

The  duration  of  every  patent  is  by  the  seventeenth  sec- 
tion of  the  Act  of  1883  directed  to  be  limited  therein  to 
fourteen  years  from  its  date.  According  to  the  case  of 
Russell  v.  Lcdsam  (14  M.  &  W.  574),  the  time  runs  from  the 
day  of  the  date  of  the  patent,  including  that  day :  for 
instance,  a  patent  for  fourteen  years,  dated  February  26, 
1825,  was  held  to  expire  at  twelve  o'clock  on  the  night  of 
February  25,  1839.  As  to  the  mode  of  obtaining  an  exten- 


172   THE  PATENT:  ITS  DATE,  DURATION,  AMD  EX  i 

sion  of  the  term,  and  the  principles  which  guide  the  Privy 
Council  in  deciding  u\*m  the  iipplk-ation,  the  reader  is 
red  to  Chapter  XIV. 

By  the  thirty-third  section  of  tin-  Act  of  1888  every 
patent  may  be  in  the  form  set  forth  in  the  first  Bchedul* , 
but  this  form  the  Board  of  Trade  haa  power,  under  the 
101st  section  subsection  2,  to  alter  or  amend.  Further,  by 
the  thirty- third  section  a  patent  is  to  be  granted  for  one 
invention  only,  but  no  objection  to  a  patent  can  1><  taken 
in  an  action  or  other  proceeding  on  the  ground  that  it 
comprises  more  than  one  invention. 

On  reference  to  the  form  of  patent  printed  in  the 
Appendix  to  this  volume  it  will  be  seen  that  the  Crown 
grants  unto  A.  B.  especial  licence,  full  power,  sole  privilege 
and  authority,  that  he,  the  said  patentee,  by  himself,  his 
agents  or  licensees,  at  all  times  thereafter  during  the  term 
of  fourteen  years  from  the  date,  may  make,  use,  exercise, 
and  vend  his  invention  within  the  United  Kingdom  of 
Great  Britain  and  Ireland,  and  Isle  of  Man,  in  such  manner 
as  to  him  or  them  shall  in  his  or  their  discretion  seem  meet; 
and  to  the  end  that  the  said  patentee  may  have  and  enjoy 
the  sole  use  and  exercise  and  the  full  benefit  of  the  said 
invention,  all  the  Queen's  subjects  whatsoever  are  strictly 
commanded  not  to  infringe  the  patent.  It  is,  however,  pro- 
vided that,  if  it  shall  be  made  to  appear  to  the  Crown  or  the 
Privy  Council  that  the  grant  is  contrary  to  law,  or  prejudicial 
or  inconvenient  to  the  subjects  of  the  realm  in  general,  or 
that  the  invention  is  not  a  new  invention  as  to  the  public  use 
and  exercise  thereof  within  the  United  Kingdom,  <tc.,  or  that 
the  said  patentee  is  not  the  first  and  true  inventor  thereof 
within  the  realm,  the  patent  shall  be  void. 

There  are  also  other  provisoes,  the  two  most  important 
of  which  make  the  grant  void — first,  if  the  said  patentee 
shall  not  pay  all  fees  by  law  required  to  be  paid  in  respect 
of  the  patent  or  in  respect  of  any  matter  relating  thereto  at 
the  time  or  times  and  in  manner  for  the  time  being  by  law 
provided  ;  and,  second,  if  the  said  patentee  shall  not  supply 
or  cause  to  be  supplied  for  the  service  of  the  Crown  all 


THE  PATENT:    ITS  DATE,  DURATION,  AND  EXTENT      173 

such  articles  of  the  said  invention  as  may  be  required  by 
the  officers  or  commissioners  administering  any  department 
of  the  service  in  such  manner,  at  such  times,  and  at  and 
upon  such  reasonable  prices  and  terms  as  shall  be  settled 
in  manner  for  the  time  being  by  law  provided. 

By  the  operation  of  the  seventeenth  section  of  the  Act 
of  1883  every  patent  will  cease  if  the  patentee  fails  to  make 
the  prescribed  payments  within  the  prescribed  times.  A 
payment  of  50L  must  be  made  before  the  end  of  the  fourth 
year  and  100Z.  before  the  end  of  the  eighth  year  (or  before 
the  end  of  the  seventh  year,  in  case  of  patents  dated  prior  to 
January  1,  1884).  Or  instead  of  these  payments  annual 
fees  may  be  paid.  These  annual  fees  and  the  prescribed 
times  for  payment  are  set  forth  in  the  Appendix  to  this 
volume.  As  to  the  procedure  in  regard  to  certificates  of 
payment  or  renewal  see  rules  45-48  of  the  Patents  Kules 
1890. 

It  is,  however,  provided  by  the  seventeenth  section  of 
the  Act  of  1883  that  if  in  any  case,  by  accident,  mistake, 
or  inadvertence,  a  patentee  fails  to  make  any  prescribed 
payment  within  the  prescribed  time,  he  may  apply  to  the 
Comptroller  for  an  enlargement  of  the  time  for  making  that 
payment ;  and  thereupon  the  Comptroller  shall,  if  satisfied 
that  the  failure  has  arisen  from  any  of  the  above-mentioned 
causes,  on  receipt  of  the  prescribed  fee  for  enlargement,  not 
exceeding  ten  pounds,  enlarge  the  time  accordingly,  but 
not  for  more  than  three  months.  (As  to  the  procedure,  see 
rule  49  of  the  Patents  Eules  1890,  and  form  K.)  It  is 
further  provided  that  if  any  proceeding  shall  be  taken  in 
respect  of  an  infringement  of  the  patent  committed  after  a 
failure  to  make  any  payment  within  the  prescribed  time, 
and  before  the  enlargement  thereof,  the  Court  before  which 
the  proceeding  is  proposed  to  be  taken  may,  if  it  shall  think 
fit,  refuse  to  award  or  give  any  damages  in  respect  of  such 
infringement. 

In  the  case  of  Williams  v.  Nash  (28  Bea.  93)  it  was  held 
that  a  payment  on  the  third  anniversary  of  the  date  was  a 
sufficient  compliance  with  the  statute  which  prescribed  the 


174      THE  PATEN  I  KATION,  AND  EXTBHT 

jiaynu  nt  of  a  stamp  duty  of  50/.  ;  t  expiration  of  the 

third  year.    The  patent  was  dated  on  try  26,  1855, 

and  tli*  third  year's  stamp  duty  was  paid  on  Februur 
1858. 

Undi-rthi  -nil  ;th  ^-rtion  of  tin;  Art  of  1H88,  when- 

ever the  last  day  for  paying  a  fee  at  the  Patent  Office  I 
happen  to  fall  on  Christmas  Day,  Good  Friday,  or  on  a 
Saturday  or  Sunday,  or  on  a  day  observed  as  a  holiday 
at  the  Bank  of  Kn^hmd,  or  on  any  day  observed  as  a 
}>ul»lic  fast  or  thanksgiving,  the  fee  may  be  paid  on  the  day 
following  any  of  these  days. 

\Vlu-re  any  prescribed  payment  has  not  been  made  in 
diu  time,  and  no  application  has  been  made  to  the  Comp- 
troller for  an  enlargement  of  the  time,  and  the  patent  has 
const (jurntly  become  void,  nothing  short  of  a  special  Act  of 
Parliament  can  restore  its  validity.  But  such  Acts  are 
more  difficult  to  obtain  since  the  Act  of  1883  came  into 
operation  than  formerly. 

In  case  clerical  errors  should  have  been  made  in  Letters 
Patent,  the  Master  of  the  Bolls  had  and  still  has  power  to 
correct  them  (Re  Nickel*'  Pnt.nt,  \  Bea.  568;  He  Gare't 
t,  L.  B.  26  Ch.  D.  105) ;  but  the  application  must 
be  made  within  a  reasonable  time  (He  BlamtmiV*  1' 
8  L.  T.  N.  s.  800).  In  the  case  of  Adam's  l',it,,,t  (1  W. 
B.  259),  a  doubt  having  been  expressed  as  to  the-  jurisdic- 
tion of  the  Master  of  the  Bolls,  the  order  was  made  by  the 
Lord  Chancellor.  But  now  the  powers  of  amendment 
given  to  the  Comptroller  by  section  18  of  the  Patents  Act 
1883  seem  extensive  enough  to  cover  clerical  errors  in 
patents. 

In  the  event  of  a  patent  being  lost  or  destroyed,  or  if  its 
non-production  should  be  accounted  for  to  the  satisfaction 
of  the  Comptroller,  he  is  empowered  by  the  thirty-seventh 
section  of  the  new  Act  to  cause  a  duplicate  thereof  to  be 
sealed. 

In  the  case  of  l\-«tli.*r  v.  The  Queen  (6  B.  &  S.  257),  it 
was  decided  that  the  Crown  has  a  right  to  the  free  use  of 
any  patented  invention  (see  the  case  more  fully  stated  at 


THE  PATENT:    ITS  DATE,  DURATION,   AND  EXTENT      175 

the  end  of  the  chapter  on  Infringements)  ;  and  this  decision 
applies  to  all  patents  granted  before  the  commencement  of 
the  Act  of  1883,  or  on  applications  then  pending ;  but  as 
to  patents  granted  afterwards,  they  will  have  the  same 
effect  against  the  Crown  as  against  a  subject  (section  27). 
The  officers  or  authorities  administering  any  department  of 
the  service  of  the  Crown,  their  agents,  contractors,  or  others 
are  to  be  entitled  to  use  any  invention  for  the  service  of  the 
Crown  on  terms  to  be  agreed  upon  with  the  approval  of  the 
Treasury ;  or  if  an  agreement  cannot  be  effected,  then  on 
such  terms  as  the  Treasury,  after  hearing  all  parties 
interested,  shall  settle. 

By  the  forty-fourth  section  of  the  Patents  Act  of  1883 
the  Secretary  of  State  for  War  is  empowered  to  acquire  by 
purchase  or  gift  the  benefit  of  any  inventions  of  improve- 
ments in  munitions  of  war,  and  of  any  patent  obtained  for 
the  same,  and  to  prevent  the  disclosure  of  such  inven- 
tions. 

The  effect  of  the  forty-fifth  section  is  that  patents 
issued  or  applied  for  before  the  commencement  of  the  Act 
will  not  have  the  benefit  of  the  provision  binding  the 
Crown,  nor  will  they  come  under  the  liability  imposed  by 
the  clauses  relating  to  compulsory  licences.  But  in  all 
other  respects,  including  the  proceedings  for  amendments, 
prolongations,  and  revocations,  the  Act  of  1883  will  extend 
to  patents  granted  before  the  commencement  of  the  Act,  or 
on  applications  then  pending,  except  slight  differences  on 
the  payment  of  the  annual  fees.  (See  Appendix.) 

By  the  thirty-fifth  section  of  the  Act  of  1883  a  patent 
granted  to  the  true  and  first  inventor  is  not  to  be  invalidated 
by  an  application  in  fraud  of  him,  or  by  provisional  protec- 
tion obtained  thereon,  or  by  any  use  or  publication  of  the 
invention,  subsequent  to  that  fraudulent  application  during 
the  period  of  provisional  protection. 

The  113th  section  of  the  Patents  Act  of  1883  repeals  all 
the  statutes  described  in  the  third  schedule  of  the  Act,  but 
goes  on  to  enact  that  the  repeal  shall  not  affect  the  past 
operation  of  any  of  those  statutes.  Now,  the  twenty-fifth 


176     THE  PATENT:  ITS  DATE,  DURATION,  AND  EXTENT 

section  of  the  Patents  Act  of  1852  declares  tha  itish 

patent  \\hirh  bears  date  after  a  foreign  patent  f..r  th*  game 
invention  (being  a  foreign  invention)  hlioll  be  void  ut  th«- 
<  xpiration  of  such  foreign  patent.  Consequently,  any 
J'.nti-h  patent  granted  before  the  commencement  of  the  Act 
of  1883,  and  standing  in  this  relation  to  a  foreign  pa 
will  lie  void  by  the  operation  of  these  two  clauses,  in  case 
the  foreign  patent  shall  have  « \pin  <1  )><  f<>n  the  commence- 
UK  nt  <>f  tin-  Act  of  1883.  That  is  to  say,  since  the  enrli.  r 
Act  has  already  rendered  the  Hi  itish  patent  void,  that  'past 
operation '  of  the  Act  will  not  be  affected  by  its  repeal  l.y 
tin-  Act  of  1883.  But  if  the  twenty-fifth  section  of  the 
earlier  Act  nt  tin-  time  of  its  repeal  has  not  had  an  invali- 
dating operation  on  a  patent,  then  the  British  paUnt  \\ill 
not  be  touched,  and  the  clause  in  question  will  have  no 
effect.  As  regards  patents  which  have  been  obtained  on 
applications  pending  at  the  commencement  of  the  new  Act, 
it  is  presumed  that  the  third  subsection  of  the  forty- fifth 
section  of  that  Act  will  effectually  protect  them  from  the 
operation  of  the  twenty-fifth  section  of  the  Act  of  1852. 

The  operation  of  sect.  113  on  patents  granted  under  the 
Act  of  1852  was  considered  with  reference  to  other  points 
in  the  cases  of  Singer  v.  Stassen  (1  R.  P.  C.  121)  and 
Brandon's  Patent  (1  R.  P.  C.  154). 

It  was  held  by  />«/•«//  lln<l<lL-*t<>n  in  the  case  of  A'«/</ 
f.-ldt  v.  Gardner  (1  R.  P.  C.  10  and  73),  that  in  order  to 
invalidate  a  British  patent  on  the  ground  of  the  invention 
being  a  foreign  invention  for  which  a  Belgian  patent  had 
l>een  obtained  prior  to  the  date  of  the  British  patent  and 
had  lapsed,  the  foreign  patent  must  have  been  not  merely 
applied  for,  but  actually  obtained  before  the  British  patent, 
and  this,  although  the  foreign  patent  when  granted  bore  a 
date  earlier  than  that  of  the  British  patent. 

When  a  patent  is  granted  to  two  or  more  persons,  each 
may  use  the  invention  without  being  liable  to  account  to 
the  other.  (Mathers  v.  Green,  1  Law  Rep.  Ch.  Ap.  29,  before 
Lord  Cranit-orth,  C.)  See,  however,  the  earlier  case  of 
Hancock  v.  Dewley  (Johns.  601),  as  to  the  rights  of  parties 


THE  PATENT:  ITS  DATE,  DUEATION,  AND  EXTENT      177 

where  Letters  Patent  are  vested  in  trustees  for  two  or  more 
persons  as  tenants  in  common. 

In  case  of  the  death  of  the  patentee  intestate  before  the 
expiration  of  the  patent,  his  interest  under  it  passes  to  his 
personal  representatives,  and  not  to  his  heir.  In  case  of 
bankruptcy  the  property  in  the  patent  will  pass  to  the 
trustee  or  assignee,  like  the  rest  of  the  bankrupt  patentee's 
personal  assets.  (Bloxam  v.  Elsee,  9  D.  &  E.  215.) 


N 


178  MENTS  OF  8PECII 


CHAPTER   XIII. 

AMENDMENTS   OP   SPECIFICATIONS. 

IT  has  been  shown  that  where  a  material  part  of  an  alleged 
invention  is  not  new  or  not  useful,  the  patent  is  altogether 
invalid ;  and  that  if  a  patentee  claims  by  his  specification 
more  than  he  is  entitled  to,  the  patent  is  likewise  void. 
The  fatal  effect  of  an  inconsistency  between  the  title  and 
the  specification,  or  between  the  provisional  and  the  com- 
plete specification,  has  also  been  pointed  out.  To  remedy 
a  law  which  in  many  cases  bore  unjustly  upon  patentees, 
the  Act  of  5  and  6  Win.  IV.  c.  88  empowered  a  patentee 
to  take  steps  for  altering  his  specification  by  disclaimer. 
That  Act,  however,  as  well  as  other  Acts  relating  to  dis- 
claimers, were  repealed  by  the  Act  of  1883,  which  substi- 
tuted the  following  provisions  for  those  of  previous  statutes. 
By  the  eighteenth  section  it  is  enacted  that — 

(1)  An  applicant  or  a  patentee  may  from  time  to  time, 
by  request  in  writing  left  at  the  Patent  Office,  seek  leave  to 
amend  his  specification,  including  drawings  forming  part 
thereof,  by  way  of  disclaimer,  correction,  or  explanation, 
stating  the  nature  of  such  amendment,  and  his  reasons  for 
the  same. 

(2)  The  request  and  the  nature  of  such  proposed  amend- 
ment shall  be  advertised  in  the  prescribed  manner,  and  at 
any  time  within  one  month  from  its  first  advertisement 
any  person  may  give  notice  at  the  Patent  Office  of  opposi- 
tion to  the  amendment. 

(8)  Where  such  notice  is  given  the  Comptroller 
shall  give  notice  of  the  opposition  to  the  person  making 
the  request,  and  shall  hear  and  decide  the  case  subject  to 
an  appeal  to  the  law  officer. 


AMENDMENTS  OF  SPECIFICATIONS  179 

(4)  The  law  officer  shall,  if  required,  hear  the  person 
making  the  request  and  the  person  so  giving  notice,  and 
being  in  the  opinion  of  the  law  officer  entitled  to  be  heard 
in  opposition  to  the  request,  and  shall  determine  whether, 
and   subject  to  what  conditions,  if  any,  the  amendment 
ought  to  be  allowed. 

(5)  Where  no  notice  of  opposition  is  given  or  the  person 
so  giving  notice  does  not   appear,  the  Comptroller  shall 
determine  whether,  and  subject  to  what  conditions,  if  any, 
the  amendment  ought  to  be  allowed. 

(6)  When  leave  to  amend  is  refused  by  the  Comptroller, 
the  person  making  the  request  may  appeal  from  his  decision 
to  the  law  officer. 

(7)  The  law  officer  shall,  if  required,  hear  the  person 
making  the  request  and  the  Comptroller,  and  may  make  an 
order  determining  whether,  and  subject  to  what  conditions, 
if  any,  the  amendment  ought  to  be  allowed. 

(8)  No  amendment  shall  be  allowed  that  wrould  make 
the  specification,  as  amended,  claim  an  invention  substan- 
tially larger  than  or  substantially  different  from  the  in- 
vention  claimed  -by  the  specification   as  it   stood  before 
amendment. 

(9)  Leave   to   amend   shall   be   conclusive    as    to   the 
right  of  the  party  to  make  the  amendment  allowed,  except 
in  case  of  fraud ;  and  the  amendment  shall  in  all  Courts 
and  for  all  purposes  be  deemed  to  form  part  of  the  specifi- 
cation. 

(10)  (As  amended  by  the  fifth  section  of  the  Act  of  1888.) 
The  foregoing  provisions  of  this  section  do  not  apply  when 
and  so  long  as  any  action  for  infringement  or  proceeding 
for  revocation  of  a  patent  is  pending. 

The  procedure  on  applications  for  amendments  is  regu- 
lated by  rules  52-59  of  the  Patents  Rules,  1890. 

After  specifications  have  become  public  property  they 
must  be  amended  under  section  18.  Any  other  amendments 
are  to  be  dealt  with  under  sections  7  and  9  of  the  Act  of  1883. 
(Jones'  Patent,  1  Griff.  313.)  Where  an  applicant  desires, 
prior  to  the  acceptance  of  his  complete  specification,  to  omit 

N  2 


180  AMENDMENTS  OF  SPECIFICATIONS 

part  of  the  invention  covered   by  the   original   title,  the 

Coniptmllrr  should  give  him  tin-  option  of  either  filing  tho 

specification  with  tin-  nri^iiuil  title  and  ins« •rti 

clause,  or  should  amend  the  original  till,   in 

and  the  provisional  specification,  as  he  is  \  irtiiiilly  empowered 

to  do  under  ss.  7  and  9,  the  anu  n<lm» -nt  !•«  in^'  rnntiiml 

to  simple  excision.     (I tart'*  l\it,nt,  1  CiritT.  1'.  C.  807.) 

According  to  the  report  of  Hear#nS*  .l]>]>li<-uti,in  d  1;. 
P.  C.  214),  both  the  then  law  officers  were  of  opinion  that 
the  Comptroller  has  power  to  impose  conditions  on  ^ri\  in- 
leave  to  amend  a  specification  by  way  of  disclaimer.  But  he 
cannot  give  costs.  (Pichchmann't  Patent,  1  (JrifiF.  1'.  C.  U10.) 

The  twenty-first  section  directs  that  every  amendment 
of  a  specification  shall  be  advertised.  This  will  be  done  by 
the  Comptroller  under  rule  59. 

A]>i>'-dl  t<>  tlf  Law  Officer. — The  law  officers  rules  will  be 
found  in  the  Appendix.  By  sect.  88  of  the  Act  of  1888  they 
have  power  to  examine  witnesses  on  oath. 

There  is  no  appeal  from  the  order  of  the  law  officer  \\  lit -n 
he  grants  or  refuses  leave  to  amend  on  the  appeal  to  him 
from  the  decision  of  the  Comptroller.  Nor,  according  to  the 
decision  of  a  Divisional  Court  and  the  Court  of  Appeal  in 
the  case  of  Van  Gelder'g  Patent  (6  R.  P.  C.  22),  can  a  writ 
of  prohibition  be  obtained,  prohibiting  the  law  officer  from 
allowing  the  amendment  of  a  specification. 

An  amendment  which  has  been  allowed  by  the  Comp- 
troller or  law  officer  can  be  questioned  in  a  Court  of  Law 
if  it  is  contrary  to  subs.  8  of  s.  18  of  the  Act  of  1888,  that 
is,  if  it  makes  the  specification  claim  an  invention  larger 
than,  or  different  from,  the  invention  originally  claimed. 
(Van  Gelders  Patent,  6  R.  P.  C.  22;  Gaitlard  and  GMi*' 
P.itent,  6R.  P.  C.  225.) 

ir//<>  i*  entitled  to  oppose. — When  the  ground  of  opposi- 
tion is  that  the  invention  as  described  in  the  amended 
specification  is  the  same  as  that  comprised  in  a  prior 
patent,  it  is  not  competent  for  any  member  of  the  public 
to  oppose ;  the  opponent  must  show  that  be  has  an  interest 
in  the  prior  patent.  (BcWs  Patent,  2  Griff.  P.  C.  11.) 


AMENDMENTS   OF  SPECIFICATIONS  181 

Grounds  of  Opposition. — These  are  usually  some  of  the 
following:  that  the  proposed  amendment  will  introduce 
disconformity  between  the  provisional  and  the  complete 
specification ;  that  the  scope  of  the  invention  will  be 
enlarged ;  that  the  amended  specification  will  claim  an  in- 
vention substantially  different  from  that  claimed  by  the 
original  specification  ;  that  the  invention  will  be  made  the 
same  as  that  described  in  a  prior  specification. 

It  is  not  a  good  ground  of  opposition  that  the  invention 
will  be  restricted  within  narrower  limits  by  the  amendment, 
provided  that  the  invention  so  restricted  is  covered  by  the 
original  specification.  Cochrane's  Patent  (1  Griff.  P.  C. 
304) ;  Ashworth's  Patent  (2  Griff.  P.  C.  6)  ;  Nordenfelt's 
Patent  (2  Griff.  P.  C.  19). 

Conditions  imposed  on  allowing  Amendments  under  the 
old  law. — It  had  become  a  common  but  not  invariable  prac- 
tice under  the  old  law  for  the  law  officers,  on  applications 
for  leave  to  amend  specifications  under  the  Act  of  5  &  6 
Wm.  IV.,  to  impose  as  a  condition  that  no  action  for  an 
infringement  before  the  date  of  the  disclaimer  should  be 
brought  either  against  certain  persons  or  against  any  of  the 
public.  See  Holmes  v.  London  and  North-Western  Railway 
Co.  (Macr.  P.  C.  31)  and  Smith's  Patent  (Macr.  P.  C.  232). 

In  Re  Tranter's  Patent  of  1865,  which  was  a  patent  for 
fire-arms  and  cartridges,  an  application  was  made  in 
August  1873,  by  the  assignees  of  the  patent,  for  leave  to 
disclaim  certain  portions  of  the  matters  claimed  in  the 
specification,  and  the  application  was  opposed  by  manu- 
facturers of  fire-arms  and  cartridges  chiefly  on  the  ground 
that  they  had  embarked  large  capital  in  the  manufacture 
of  cartridges,  and  that  they  ought  to  be  protected  in  their 
manufacture  against  any  proceedings  on  the  part  of  pro- 
prietors of  a  patent  which  had  been  allowed  to  remain  in 
its  imperfect  state  for  a  long  time,  inasmuch  as  the  effect 
of  the  disclaimer  would  be  to  enable  the  applicants  to  take 
such  proceedings.  Coleridge,  A.  G.,  granted  the  leave 
sought  for  on  the  condition  that  the  applicants  'should 
undertake  that  no  legal  proceedings  be  taken  against  the 


182  AMENDMENTS  OF  SPECIFICATIONS 

opponents  in  respect  of  the  manufacture,  nae,  or  sale  of 
ulges,  or  for  any  alleged  infringement  of  the  patent 
in    question   \\lit  n    unit  nded  by  disclaimer.'      And    tin- 
ion  was  followed  1>\  '  ''..  in  the  case  of  /.'• 
x    I'dt.nt,   on   the  application  of   Mr.  Batley,  the 
assignee,  for  similar  leave. 

On  an  application  for  leave  to  disclaim  parts  of  the 
specification  under  Craltrcc't  r.it.nt,  No.  2775  of  1878, 
.lnm?*t  A.  (?.,  Feb.  12,  1881,  allowed  tin-  application  upon 
terms  that  no  action  should  !><•  brought  against  any  person 
in  respect  of  any  machine  which  had  prior  to  the  hearing 
been  made  or  sold  by  any  of  the  opponents.  He  directed 
that  lists  of  such  machines  should  be  supplied  and  verified 
if  required  by  statutory  declaration. 

The  principle  of  these  cases  received  considerable  ex- 
tension in  lie  Mi'tlliH'h'x  r<it'-nt  (Newton's  L.  J.  N.  s.  vol. 
xxii.  p.  f>9).  That  was  an  application  for  leave  to  enter  a 
disclaimer  of  part  of  a  specification  under  a  patent  for 
l>r«] taring  a  red  or  purple  dye.  The  patent  had  been 
declared  invalid  on  the  ground  that,  of  the  two  alternative 
processes  described  in  the  specification,  confessedly  only 
one  would  answer.  (Sec  .S'»w/>x..»  v.  If»lli<Lnf,  13  W.  R.  577, 
cited  ante.)  The  application  was  opposed  by  several 
chemical  manufacturers,  some  of  whom  had  been  made 
defendants  in  suits  instituted  by  the  owners  of  the  patent. 
Coll  .,  would  only  consent  to  grant  the  leave  sought 

for  on  the  terms  that  the  applicants  should  bring  no  action 
against  the  opposers  '  for  any  infringement  of  the  patent 
by  the  use  or  continued  use,  dnrin<i  thr  rutitininnirr  <>/  th,- 
patent,  of  any  processes  for  manufacturing  red  and  purple 
dyes  in  use  Inj  tJi>-m  at  th>-  pn^i-nt  time.1  The  applicants 
refused  to  accept  this  condition,  and  the  Solicitor-General 
consequently  disallowed  the  disclaimer. 

The  law  officer,  however,  did  not  always  insist  upon  the 
patentee  giving  an  undertaking  of  this  nature.  It  was 
sometimes  thought  right  that  he  should  be  at  liberty  to 
seek  compensation  for  the  past  infringement  of  the  patent. 
(Re  Lucas  s  Patent,  Macr.  P.  C.  234.) 


AMENDMENTS  OF  SPECIFICATIONS  183 

Conditions  under  the  Act  of  1883. — An  order  having 
been  obtained  during  the  progress  of  an  action  for  an  in- 
fringement to  amend  a  specification  under  a  patent  issued 
under  the  Act  of  1852,  subject  only  to  the  payment  of  the 
costs  by  the  plaintiff,  application  was  made  to  the  Comp- 
troller, who  gave  leave  to  amend  as  proposed  without 
imposing  any  conditions.  On  appeal  to  the  law  officer, 
Herschett,  S.  (?.,  he  held  that  the  leave  should  be  made 
subject  to  the  condition  that  no  action  should  be  brought 
or  proceeding  taken  in  respect  of  any  infringement  prior 
to  January  1,  1884,  but  without  prejudice  to  any  question 
in  the  pending  action.  (Re  Hearson's  Patent,  1  E.  P.  C. 
214.)  See  also  Westinghouse's  Patent  (1  Griff.  P.  C.  315)  ; 
Ashivorth's  Patent  (2  Griff.  P.  C.  6) ;  Haddan's  Patent  (2 
Griff.  P.  C.  12).  The  ground  for  fixing  that  date  is  that 
infringements  subsequent  to  January  1,  1884,  would  be 
brought  within  the  scope  of  the  20th  sect,  of  the  Act  of 
1883.  Hence,  such  a  condition  is  not  usually  imposed  on 
allowing  amendments  in  specifications  under  patents  issued 
since  the  latter  Act  came  into  operation.  (Allen's  Patent,  2 
Griff.  P.  C.  3.)  There  may  be  special  circumstances  to 
induce  the  law  officer  to  impose  the  condition  that  no  action 
should  be  brought  for  anything  done  at  any  time  before  the 
amendment.  (Ashworth's  Patent,  2  Griff.  P.  C.  9.)  This 
was  a  patent  under  the  Act  of  1852. 

The  law  officer  sometimes  thinks  it  right  to  require  the 
insertion  of  an  additional  disclaimer.  (Hampton  &  Facer's 
Patent,  2  Griff.  P.  C.  13.) 

1  Explanations.'' — Sir  E.  Webster,  A.  G.,  said  in  Beck 
and  Justice's  Patent  (2  Griff.  P.  C.  10),  'My  idea  of  the 
function  of  an  explanation  (sect.  18,  subs.  1,  of  the  Act 
of  1883)  is  to  explain  more  clearly  what  is  necessary  to 
understand  the  meaning  of  the  patentee  at  the  time  he 
patented  the  invention.  I  do  not  think  it  is  intended  that 
he  should  put  in  subsequently  acquired  knowledge.  I  do 
not  mean  to  lay  down  a  hard-and-fast  rule,  but,  speaking 
broadly,  it  was  intended  to  permit  a  man  to  amend,  correct, 
and  explain  the  enunciation  of  his  invention  as  he  intended 


184  AMENDMENTS  OF  SPECIFICATIONS 

originally  to  give  it.'    And  sec  KordfiiMC*  1'  <  .riff. 

P.  C.  18). 

The  amendment  of  a  specification  by  inserting  the 
correct  description  of  a  drawing  which  had  been  misdescribed 
was  allowed  in  the  cas«    of  .V"f-M//'«  I'.tt.nt  c2  (iriff.  1 
17). 

Application  to  a  Judge  f»r  lil>-rt<i  t«  >i}>]>li/  to  amend 
.  —When  a  patentee  has  brought  an  action  for 
the  infringement  of  his  patent,  or  when  proceedings  for  its 
revocation  an  p«  nding,  he  is  prevented  by  the  10th  subs. 
of  sect.  18  of  the  Act  of  1888  from  applying  directly  in  th. 
u>ual  way  to  the  Comptroller  for  leave  to  amend  the  speci- 
fication. But  by  the  19th  sect,  of  that  Act  it  is  enacted 
that  in  an  action  for  infringement  of  a  patent,  and  in  a 
proceeding  for  revocation  of  a  patent,  the  Court  or  a  judge 
may  at  any  time  order  that  the  patentee  shall,  subject  to 
such  terms  as  to  costs  and  otherwise  as  the  Court  or  a  judge 
may  impose,  be  at  liberty  to  apply  at  the  Patent  Office  for 
leave  to  amend  his  specification  by  way  of  disclaimer,  and 
may  direct  that  in  the  meantime  the  trial  or  hearing  of  the 
action  shall  be  postponed.  Under  rule  58  of  the  Patents 
Rules,  1890,  an  office  copy  of  the  judge's  order  must  be 
left  at  the  Patent  Office  along  with  the  request  for  leave  to 
amend.  <r,,,/,rx  Patent,  1  Griff.  P.  C.  305.) 

After  judgment  it  is  both  too  late  and  unnecessary  to 
make  application  to  the  judge  for  liberty  to  apply  to  amend, 
since  the  judge  has  then  no  power  to  make  an  order,  and 
the  patentee  is  at  liberty  to  apply  directly  to  the  Patent 
Office  in  the  ordinary  way,  even  if  an  appeal  to  the  House 
of  Lords  be  pending.  (Cropper  v.  Smith,  1  R.  P.  C.  254  ; 
and  see  Lnu-n-ito-  v.  Perry,  2  R.  P.  C.  187.) 

It  seems  that  where  more  than  one  legal  proceeding 
relating  to  a  patent  is  pending  it  is  not  necessary  to  apply 
for  leave  to  disclaim  in  all  of  them.  (I fall  nntl  others,  5  R. 
P.  C.  806.)  And  in  the  same  case  it  was  held  by  a  Divi- 
sional Court  that  after  a  judge's  order  had  been  obtained 
giving  liberty  to  apply  to  the  Comptroller  for  leave  to  amend 
the  specification,  a  writ  of  prohibition  to  prevent  him  pro- 


AMENDMENTS  OF  SPECIFICATIONS  185 

ceeding  with  the  hearing  of  the  application  ought  to  be 
refused. 

The  discretion  given  to  the  Court  or  a  judge  by  the  19th 
sect,  is  absolute  in  each  particular  case  upon  the  particular 
circumstances  of  that  case,  and  will  not  be  interfered  with 
by  the  Court  of  Appeal  unless  it  can  be  shown  to  have 
been  absolutely  wrong.  (Allen  v.  Doulton,  4  E.  P.  C.  383 ; 
Lang  v.  The  Whitecross  Company,  6  E.  P.  C.  570.) 

The  terms  to  be  imposed  on  the  person  seeking  to  amend 
should  be  such  as  to  give  full  protection  to  the  other  party. 
Bray  v.  Gardner  (4  E.  P.  C.  40). 

The  Court  of  Appeal  in  Singer  v.  Stassen  (1  E.  P.  C. 
122)  held  that  liberty  to  apply  for  disclaimer  during  action 
should  be  given  upon  the  terms  that  the  costs  of  the  amend- 
ment should  be  the  defendants'  costs  in  any  event,  and  that 
the  specification,  as  amended,  should  not  be  receivable  in 
evidence  in  the  action.  In  Codd  v.  Braiby  (1  E.  P.  C.  209), 
leave  to  amend  was  given  upon  the  terms  that  the  specifica- 
tion when  amended  should  not  be  given  in  evidence  at  the 
trial;  that  no  evidence  of  infringement  should  be  given 
prior  to  the  date  of  filing  the  amended  specification  ;  and 
that  the  costs  of  the  motion  be  paid  by  the  plaintiffs.  In 
the  Fusee  Vesta  Co.  v.  Bryant  &  May  (4  E.  P.  C.  71),  it 
was  ordered  that  the  costs  of  the  defendants  in  the  action 
up  to  and  including  the  plaintiffs'  application  to  amend,  and 
consequent  upon  the  amendment,  should  be  borne  by  the 
plaintiffs  in  any  event.  See  also  Gaulard  v.  Lindsay  (5  E. 
P.  C.  192) ;  Haslam  Co.  v.  Goodfellow  (5  E.  P.  C.  28) ; 
Lang  v.  The  Whitecross  Co.  (6  E.  P.  C.  570)  ;  Gaulard 
and  Gibbs'  Patent  (5  E.  P.  C.  189)  ;  as  to  the  terms  upon 
which  Hberty  to  apply  to  the  Comptroller  for  leave  to 
amend  the  specification  will  be  given.  The  last  of  these 
cases  was  a  petition  for  revocation,  and  the  two  former 
were  actions  for  infringements,  in  which,  on  giving  the 
liberty  applied  for,  the  condition  was  imposed  that  the 
action  should  be  confined  to  the  specification  as  amended, 
and  therefore  damages  for  infringements  prior  to  the  amend- 
ment could  not  be  claimed. 


186  AMENDMENTS  OF  SPECIFIC  ATI  0X3 

Seeing  what  are  the  terms  usually  imposed  on  a  plaintiff 
when  making  application  to  the  Court  for  liberty  to  apply 
for  leave  to  amend  his  specification,  it  may  in  some  OMOfl 
be  worth  consideration  whether  both  time  and  money 
\vdtil<l  not  be  saved  by  discontinuing  the  action  as  soon  as 
defects  are  discovered  in  the  specification,  applying  for 
leave  to  amend  at  the  Patent  Office  in  the  ordinary  way, 
and  then  bringing  a  fresh  action  if  that  coarse  is  thought 
desirable. 

nendmcntt  mutt  n»t  t-nlarge  or  materially  rary  the 
arifiindl  in  nut  inn. — We  have  seen  that  under  the  eighth 
sub-section  of  the  eighteenth  section  of  the  Act  of  1883  '  no 
amendment  shall  be  allowed  that  would  make  the  specifica- 
tion as  amended  claim  an  invention  substantially  larger 
than  or  substantially  different  from  the  invention  claimed 
by  the  specification  as  it  stood  before  the  amendment.' 

It  is  part  of  the  duty  of  the  Comptroller  and  the  law 
officers,  when  hearing  applications  for  leave  to  amend,  to 
see  that  the  proposed  amendment  does  not  extend  the  scope 
of  the  patent,  or  alter  the  claims  in  such  a  way  that  the 
invention  would  become  something  substantially  larger  than 
or  substantially  different  from  what  it  was  originally.  (Iffath 
and  Frost's  Patent,  1  Griff.  810.)  When  it  is  clear  to  the 
Comptroller  or  to  the  law  officer  that  a  proposed  amendment 
would  contravene  subs.  8  of  s.  18,  it  is  his  duty  to  dis- 
allow it  (Iffath  and  Frost's  Patent,  nli  xupra)  ;  but  when 
the  question  is  doubtful,  he  ought  to  allow  the  patentee  to 
make  the  amendment  at  his  peril.  (lake's  Patent,  2  Griff. 
P.  C.  16.) 

Where  a  specification  claims  both  a  general  combination 
and  some  of  the  subordinate  parts,  a  disclaimer  may  sever 
and  reject  the  claim  to  any  of  the  parts.  But  a  specifica- 
tion cannot  be  altered  so  as  to  be  made  to  claim  a  combina- 
tion or  parts  if  they  were  not  previously  claimed.  In  the 
matter  of  .SVrr.7/'*  Patent  (6  R.  P.  C.  108),  Sir  /;.  ll'slxter, 
A.  G.y  said  that  in  his  opinion  where  a  specification  con- 
tains a  distinct  and  specific  claim  to  the  operation  of  what 
is  believed  to  be  new,  the  patentee  cannot  be  allowed  to 


AMENDMENTS  OF  SPECIFICATIONS  187 

strike  out  the  whole  of  the  claim  and  insert  another  claim 
to  a  subordinate  part. 

On  the  other  hand,  care  should  be  taken  in  preparing 
a  disclaimer  that  sufficient  of  the  invention  is  left  to  sup- 
port the  patent.  (Gaulard  and  Gibbs's  Patent,  5  E.  P.  C. 
525 ;  United  Horseshoe  Co.  v.  Swedish  Horsenail  Co., 
6  E.  P.  C.  1.) 

If  there  is  a  claim  to  all  methods  of  effecting  a  certain 
result,  it  may  be  cut  down  by  disclaimer  to  the  particular 
method  described  in  the  specification.  (Ashivorth's  Patent, 
2  Griff.  P.  C.  6.) 

Disclaimers  under  the  old  law. — The  first  section  of  the 
earlier  Act  (5  and  6  Wm.  IV.  c.  83),  now  repealed,  under 
which  disclaimers  were  first  authorised,  disallowed  such 
'  as  shall  extend  the  exclusive  right  granted  by  the  letters 
patent.' 

In  the  matter  of  Bateman  and  Moore's  Patent  (Macr. 
P.  C.  116),  an  application  was  made  (1854)  to  Bethell, 
S.  G.,  for  leave  to  alter  the  specification,  so  as  to  make  it 
disclaim  the  separate  parts  of  the  invention,  and  claim 
only  the  combination.  The  Solicitor-General  said  that  he 
should  require  to  see  from  the  specification  itself  that  it 
had  not  been  intended  to  claim  the  separate  parts,  but 
their  combination  only.  Finding  some  indication  of  an  in- 
tention to  claim  the  apparatus  as  a  whole,  he  gave  the 
patentees  permission  to  reject  certain  words  in  the  claiming 
part  of  the  specification  which  were  inconsistent  with  such 
a  construction. 

Several  cases  came  before  the  Courts  in  which  the  con- 
struction of  the  prohibitive  words  of  the  earlier  Act  was 
debated.  *  The  object  of  the  Act  Authorising  disclaimers ' 
(said  Lord  Westbury  in  the  case  of  Ralston  v.  Smith,  11  H. 
L.  C.  223)  '  was  plainly  this :  that  when  you  have  in  your 
specification  a  sufficient  and  good  description  of  a  useful 
invention,  but  that  description  is  imperilled  or  hazarded 
by  something  being  annexed  to  it  which  is  capable  of  being 
severed,  leaving  the  original  description  in  its  integrity 
good  and  sufficient,  without  the  necessity  of  addition,  then 


188  AMENDMENTS  OF  SPECIFICATIONS 

you  may,  by  the  operation  of  a  disclaimer,  lop  off  the  vi« 

mutter,  and  leave  the  original  invention,  aa  deacrila  d  in 
the  specification,  untainted  and  uninjured  by  that  vicious 


The  operation  of  a  disclaimer  und<  r  the  old  law  was 
considered  in  t  ho  case  of  N-"/  v.  Hi>win*  is  I..  A  I'..  755). 
The  patentee  descril»ed  in  hi>  specification,  und  \\\ 
by  drawings,  some  machinery  for  preparing  cotton,  and 
alter  saying  that  the  apparatus  so  described  represented 
one  practicable  mode  of  carrying  out  the  invention,  he  pro- 
d  to  state  that  he  did  not  intend  to  confine  himself  to 
this  particular  method,  but  claimed  as  his  invention  the 
application  of  the  law  or  principle  of  centrifugal  force  for 
a  certain  purpose.  He  afterwards  disclaimed  his  claim  to 
the  application  of  the  law  or  principle,  and  limited  his 
claim  to  the  application  of  centrifugal  force  acting  in  a 
certain  manner  as  described  in  the  specification.  This  was 
held  to  be  a  limitation  of  his  claim  to  the  particular  appa- 
ratus described,  whereby  the  principle  was  applied  in  a 
certain  \\ay,  and  afforded  no  ground  for  contending  that 
the  disclaimer  described  a  different  invention  from  that 
described  in  the  specification.  This  view  was  also  taken 
on  appeal  by  the  Court  of  Exchequer  Chamber  (8  E.  <k  B. 
771)  and  by  the  House  of  Lords  (8  H.  L.  C.  550). 

In  the  case  of  Ual*tmt  v.  Smith  (11  C.  B.  N.  s.  471),  it 
was  decided  by  the  Court  of  Exchequer  Chamber,  and 
afterwards  by  the  House  of  Lords  (11  H.  L.  C.  228),  that 
a  disclaimer  is  bad  which  is  in  effect  an  attempt  to  turn  a 
specification  for  an  impracticable  generality  into  a  grant 
for  a  specific  process,  comprised  within  the  generality  in 
one  sense,  but  not  to  be  discovered  there  without  going 
through  the  same  course  of  experiment  which  led  to  the 
discovery  of  the  specific  process  in  the  disclaimer.  The 
specification  in  this  case  was  expressed  in  general  terms, 
embracing  a  great  number  of  modes  of  engraving  upon 
rollers  any  desired  design  for  the  purpose  of  embossing 
woven  fabrics.  It  was  afterwards  found  that  only  rollers 
with  circular  grooves  would  answer,  and  the  patentee  there- 


AMENDMENTS  OF  SPECIFICATIONS  189 

upon,  by  disclaimer,  limited  his  invention  to  such  rollers. 
'Now'  (said  Lord  Chelmsford) ,  'as  these  were  not  specifi- 
cally described  in  the  original  specification,  but  were  merely 
involved  in  the  general  terms  which  were  used,  the  patentee 
had  not  complied  with  the  conditions  of  the  letters  patent 
in  particularly  describing  and  ascertaining  the  nature  of 
his  invention.  When,  therefore,  by  his  disclaimer  he  con- 
fines his  claim  to  circular  grooved  rollers  as  his  sole  inven- 
tion, though  in  one  sense  he  may  be  said  to  narrow  a  right, 
yet  he  really  extends  it,  because  he  thereby  describes  his 
alleged  invention  sufficiently  to  enable  him  now  to  assert 
a  right  under  the  patent  which  he  never  could  have  success- 
fully maintained  upon  the  original  specification  alone.' 

Other  decisions  as  to  disclaimers  under  the  old  law  were 
Cannington  v.  Nuttall  (L.  K.  5  H.  L.  205)  and  Dudgeon  v. 
TJwmson  (L.  E.  3  A.  C.  34). 

Under  that  part  of  the  Act  of  5  and  6  William  IV.  c.  83 
which  enacts  that  '  no  objection  shall  be  made,  in  any  pro- 
ceeding whatsoever,  on  the  ground  that  the  party  making 
such  disclaimer  or  memorandum  of  alteration  had  not  such 
authority  in  that  behalf,'  it  was  held  that  the  disclaimer  of 
a  patentee  who  had  assigned  all  his  interest  in  the  patent 
could  not  be  objected  to.  (Wallington  v.  Dale,  7  Exch.  888.) 
The  language  of  the  Act  of  1883  is  that  '  leave  to  amend 
shall  be  conclusive  as  to  the  right  of  the  party  to  make  the 
amendment  allowed,  except  in  case  of  fraud.' 

Powers  of  the  Master  of  the  Rolls. — The  Master  of  the 
Kolls  has  power  to  allow  amendments  in  a  specification 
filed  under  the  Act  of  1852,  or  which  is  otherwise  to  be 
considered  as  a  record  under  the  authority  of  the  M.  E., 
notwithstanding  s.  18  of  the  Act  of  1883.  (Gares  Patent, 
L.  E.  26  Ch.  D.  105.) 

The  Master  of  the  Eolls  may  without  action  order  a 
disclaimer  to  be  removed  from  the  file,  when  filed  without 
the  consent  of  the  patentee.  (Re  Berdan's  Patent,  L.  E. 
20  Eq.  346.) 

The  M.  E.  refused  to  cancel  a  memorandum  of  altera- 


190  AMENDMENTS  OF  SPECIFICATIONS 

tion  made  under  5  and  6  William  IV.  c.  83,  when  application 
was  made  to  him  for  that  purpose,  on  the  ground  that  it  ex- 
tended the  patentee's  privilege  and  infringed  the  petitioner's 
patent  rights,  for  he  held  he  had  no  jurisdiction. 
.S//.ir/.'x  l'<n,nt,  8  Beav.  245.) 

To  amend  clerical  errors  in  a  specification  appli< 
must  be  made  to  the  Master  of  the  Rolls  or  the  Comptroller 
as  before  stated. 

The  following  cases  decided  by  the  Lord  Chancellor  or 
Master  of  the  Bolls  relate  to  the  amendment  of  clerical 
errors  under  the  old  law :  AV  sharp*  l\it,,it  (8  Beav.  "1 
Re  Redmund  (5  Buss.  44);  lie  liubcrry't  Patent  (1  \V.  !'. 
C.  649) ;  Re  Ditmore  (18  Beav.  538);  li<-  .Muwn't  Patent 
(L.  B.  5  Ch.  D.  503). 

COSTS. 

The  Acts  do  not  authorise  the  Comptroller  to  award 
costs.  (Pi,'t*clnnann'8  Patent,  1  Griff.  P.  C.  314.)  But  the 
law  officer  is  empowered  by  the  thirty-eighth  section  of  the 
Patents  Act  of  1883  to  order  costs  to  be  paid  by  either 
party,  where  leave  to  amend  is  opposed,  and  any  such 
order  may  be  made  a  rule  of  Court.  It  is  usual  to  let  costs 
follow  the  event,  but  the  law  officer  exercises  his  discretion 
according  to  the  circumstances  of  each  case.  See  the  Law 
Officers  Bules,  11  and  1-J. 


EXTENSION  OF  LETTERS  PATENT  191 


CHAPTER  XIV. 

EXTENSION  OB  PROLONGATION  OF  LETTERS  PATENT. 

NOTWITHSTANDING  the  merit  and  utility  of  his  invention,  a 
patentee  frequently  finds  himself  nearly  at  the  expiration 
of  the   term  for  which  his   patent  was  granted  without 
having  reaped  the  reward  which  he  was  fairly  entitled  to 
expect.     This   may  have  happened  from  various  causes. 
To  perfect  the  invention,  to  make  arrangements  for  the 
manufacture,  and  to  bring  the  product  to  the  notice  of  the 
public  may  have  been  attended  with  great  expenses,  which 
were  never  repaid.   It  sometimes  occurs  that  the  public  are 
slow  to  acknowledge  the  merit  of  an  invention  of  real  value, 
and   the  patentee's  privilege  is  on  the  point  of  expiring 
before  they  can  be  brought  to  extend  their  patronage  to  it. 
It  may  be  that  the  patentee's  monopoly  has  been  infringed, 
and  that  much  time  has  been  lost  and  large  costs  have 
been  incurred  in  enforcing  or  defending  his  just  rights. 
Or  it  may  be  that  the  patentee  did  not  himself  possess 
sufficient  means,  and  was  never  fortunate  enough  to  meet 
with  a  capitalist  to  advance  what  was  necessary  to  work 
the  invention.     From  some  one  of  these  causes,  or  from 
several  of  them  combined,  it  happens  not  seldom  that  a 
patentee  fails  to  derive  any  benefit,  even  if  he  escapes  loss, 
from  an  invention  of  real  merit  and  value. 

In  order  to  afford  the  unsuccessful  but  meritorious 
patentee  an  opportunity  of  remedying  this  hardship  at  a 
less  cost  than  a  special  Act  of  Parliament,  the  statute  of 
5  and  6  William  IV.  c.  83  empowered  him  to  petition  the 
Queen  in  Council  for  a  prolongation  of  the  term  of  his 
patent ;  and  now  by  the  twenty-fifth  section  of  the  Patents 


192  EXTENSION  OF  LETTERS  PATENT 

Act  of  1883  it  has  been  enacted  that  a  patentee  may,  after 
advertising  in  manner  directed  by  any  rules  made  under 
this  section  In-  int.  ntion  to  do  BO,  present  a  petition  to  her 
Majesty  in  Council,  ]. raving  that  his  patent  may  be  extended 
for  a  further  t«  rni ;  hut  such  petition  must  be  presented  at 
least  six  months  before  the  time  limited  for  the  expiration 
of  the  patent.  But  in  the  case  <»f  llrumlun'*  1'nt-  nt  (1  R. 
1 '.  ('.  r- 1  > .  it  was  held  that  owners  of  patents  existing  before 
January  1,  1884,  could  apply  for  prolongations  at  any 
time  before  the  expiration  of  such  patents.  Any  person 
may  enter  a  caveat,  addressed  to  the  Registrar  of  tin- 
Council  at  the  Council  Office,  against  the  extension.  If 
her  Majesty  shall  be  pleased  to  refer  any  such  petition  t<> 
the  Judicial  Committee  of  the  Privy  Council,  the  Committee 
shall  consider  the  same,  and  the  petitioner  and  any  person 
who  has  entered  a  caveat  shall  be  entitled  to  be  heard  on 
the  petition.  The  Judicial  Committee  are  to  have  regard 
to  the  nature  and  merits  of  the  invention  in  relation  to  the 
public,  to  the  profits  made  by  the  patentee  as  such,  and  to 
all  the  circumstances  of  the  case.  If  they  report  that  the 
patentee  has  been  inadequately  remunerated,  her  Majesty 
in  Council  may  extend  the  term  of  the  patent  for  seven,  or 
in  exceptional  cases  fourteen,  years ;  or  may  order  the 
grant  of  a  new  patent  for  the  term  therein  mentioned,  and 
containing  any  restrictions,  conditions,  and  provisions  that 
the  Judicial  Committee  may  think  fit. 

An  assignee  may  apply  for  an  extension,  but  he  does 
not  stand  altogether  in  the  same  favourable  position  as 
the  patentee.  (Claridge's  Patent,  1  Moo.  P.  C.  894.)  It  is 
chiefly  with  the  view  of  rewarding  a  meritorious  inventor 
that  the  extension  of  a  patent  is  granted.  If,  however,  the 
assignee  be  a  person  who  has  assisted  the  inventor  with 
funds  to  enable  him  to  perfect  the  invention  and  bring  it 
into  use,  this  circumstance  is  a  favourable  feature  in  a 
petitioning  assignee's  case.  (Xorton's  1  'nt>nt,  1  Moore,  P. 
C.  C.  N.  s.  839,  in  which  case  the  petitioners,  who  were  a 
public  company,  were  refused  a  prolongation  which  they 
applied  for  after  the  death  of  the  inventor.)  See  also  the 


EXTENSION  OF  LETTERS  PATENT  193 

cases  of  Cardwell's  Patent  (10  Moo.  P.  C.  C.  488)  ;  Pitman's 
Patent  (8  Moo.  P.  C.  C.  N.  s.  297) ;  Hutchison's  Patent  (14 
Moo.  P.  C.  C.  364) ;  Normand's  Patent  (L.  E.  3  P.  C.  C. 
193) ;  Recce's  Patent  (51,  Engineer,  207)  ;  Sillar's  Patent 
•(Goodeve's  cases,  581).  But  public  companies  have  in  some 
xBases  been  successful  petitioners,  Hougliton's  Patent  (7  Moo. 
P.  C.  N.  s.  309) ;  Napier's  Patent  (13  Moo.  P.  C.  543) ; 
•Church's  Patents  (3  E,  P.  C.  95). 

THE   PETITION  AND   THE   PROCEDURE.1 

The  proceedings  commence  by  the  insertion  of  adver- 
tisements in  the  public  prints,  giving  notice  of  the  patentee's 
intention  to  apply  for  a  prolongation  of  his  patent  (see  the 
Privy  Council  Eules),  and  a  petition  setting  forth  the  facts 
must  then  be  presented  to  her  Majesty  in  Council,  at  any 
time  before  the  expiration  of  the  patent,  though  it  will  be 
prudent  not  to  delay  presenting  the  petition  much  after  six 
months  before  the  expiration. 

All  facts  material  to  the  petitioner's  title,  and  to  the 
.history  of  the  patent,  must  be  stated  in  the  petition 
(Johnsons  Patent,  L.  E.  4  P.  C.  C.  83),  which  ought  to  be 
a  clear  and  candid  statement  of  the  circumstances  under 
which  the  petitioner  presents  himself  before  the  tribunal. 
In  one  case,  when  material  facts  were  omitted,  the  hearing 
was  postponed,  and  the  petition  directed  to  be  amended. 
{Hutchison's  Patent,  14  Moore,  P.  C.  C.  364.)  In  other 
cases  where  important  facts  were  not  set  forth,  the  applica- 
tions were  refused.  (Pitman's  Patent,  8  Moore,  P.  C.  C.  N.  s. 
293 ;  Horsey' s  Patent,  1  E.  P.  C.  225.)  Where  the  patentee 
had  assigned  his  patent  before  applying  for  an  extension, 
and  had  omitted  to  state  this  fact  in  his  petition,  it  was 
dismissed,  leaving  the  inventor  or  his  assignee,  if  he  thought 
proper,  to  apply  again.  (Mitchell's  Patent,  February  1882.) 
A  mortgagee  ought  to  be  made  a  party  to  the  petition. 
{Church's  Patents,  3  E.  P.  C.  95.)  And  the  legal  personal  re- 

1  Forms  of  Petition  for  Extension  of  a  Patent,  Objections  to  Extension 
and  a  Petitioner's  Accounts  will  be  found  in  Mr.  W.  N.  Lawson's  Law  and 
Practice  under  thz  Patents  Acts,  2nd  ed.  pp.  507-524. 

O 


194  EXTENSION  OF  LETTERS  PATBKT 

presentath-   <>f  the  deceased  patentee  must,  under  certain 
<  in  umstances,  join  in  tin   petition,     (ll'illacy'*  R.  5 

P.  C.  690.) 

If  foreign  patent-  have  been  obtained,  the  (act  should 
be  mentioned.    (Pitman'*  Pnt.-nt,  L.  l;.  1  I'.  C.  86;  Ail-. 
nt,  6  App.  Cas.  176;  .V»-«-/..«'«  Pat.nt,  1  I;.  I1.  C.  177), 

Important  facts  having  been  inadvertently  omitted  from 
the  petition,  leave  was  applied  for  and  granted  to  file  sup- 
plementary particulars  before  the  hearing.     (In  lie  R> 
t,  51  Eng.  207.) 

Any  person  may  enter  a  caveat  addressed  to  the  Regis- 
trar at  the  Council  Office  against  the  extension.  Having 
done  so,  he  is  entitled  to  have  notice  from  tin-  petitioner  of 
any  special  application  and  of  the  hearing,  and  may  be 
heard  in  opposition,  when  the  case  is  entered  upon,  before 
the  Judicial  Committee.  The  caveat  must  be  entered  in 
the  name  of  the  actual  opponent,  not  in  that  of  the  patent 
agent.  (Lowe**  Patent,  8  Moore,  P.  C.  C.  1.)  As  to  the 
right  of  an  alien  living  abroad  to  be  heard  in  opposition  to 
an  extension,  see  Schlumbrrger's  Patmt  (!)  Moore,  P.  C.  C'.  1  . 

By  the  sixth  of  the  Privy  Council  Rules  persons  who 
have  entered  caveats  must,  within  a  fortnight  after  st -\ 
on  them  of  copies  of  the  petition,  lodge  at  the  Council 
Office  notice  of  the  grounds  of  their  objection.  In  Ball'* 
nt  (4  App.  Ca.  171),  it  was  held  to  be  unnecessary  to 
state  the  particulars  if  the  grounds  are  given.  The  Crown 
may  adduce  evidence  against  a  patent  irrespective  of  the 
objections,  Duncan  Xt.-trart'x  Patent  (3R.  P.  C.  9);  Clmrrl,'* 
Patents  (8  R.  P.  C.  95). 

By  the   ninth  rule  the  petitioner  must  lodge  at   the 
Privy  Council  Office,  at  least  one  week  before  the  day  fixed 
for  the  hearing,  six  printed  copies  of  his  specification,  and 
also  four  copies  of  his  accounts.     If  the  accounts  are  not 
filed  in  due  time  the  Committee  may  refuse  to  go  into  th< 
question.     (Johnson's  and  Atkinson'*  Patents,  L.  R.  5  J 
87 ;  Chatir«,,tl'x  Pati-nt,  L.  R.  5  P.  C.  88,  note.) 

Under  the  eighth  section  of  the  7  and  8  Viet.  c.  69,  the 
Judicial  Committee  may  appoint  one  of  the  clerks  of  the 


EXTENSION  OF  LETTEKS  PATENT  195 

Privy  Council  to  take  any  formal  proofs  required  to  be 
taken  in  dealing  with  the  matter  before  them,  and  may 
proceed  on  the  clerk's  report  as  if  the  proofs  had  been 
taken  by  the  Committee  itself ;  and  this  section  was  not 
repealed  by  the  Patents  Act  of  1883.  By  the  sixth  sub- 
section of  the  twenty-fifth  section  of  that  Act  it  was  enacted 
that  her  Majesty  in  Council  might  make,  from  time  to 
time,  rules  of  procedure  and  practice  for  regulating  pro- 
ceedings on  such  petitions,  and  subject  thereto  such 
proceedings  should  be  regulated  according  to  the  existing 
procedure  and  practice  in  patent  matters  of  the  Judicial 
Committee.  The  rules  now  in  force  will  be  found  reprinted 
in  the  Appendix  to  this  volume. 

THE    HEARING. 

The  Judicial  Committee  of  the  Privy  Council  is 
empowered  by  the  twenty-eighth  section  (sub-section  2)  of 
the  new  Act  to  call  in  the  aid  of  an  assessor  specially 
qualified  in  any  proceeding  before  them  relating  to  patents. 

Not  more  than  two  barristers  will  be  heard  on  each 
side :  that  is  to  say,  two  in  support  of  the  applicant's  case 
and  two  in  opposition.  Where,  however,  more  parties  than 
one  oppose,  and  they  have  separate  and  independent  grounds 
of  opposition,  each  will  be  allowed  two  counsel.  The 
Attorney- General  usually  appears  to  watch  the  case  on 
behalf  of  the  Crown.  The  petitioner  may  appear  in  person. 

The  petitioner  must  be  prepared  at  the  hearing  with 
evidence  to  show  that  there  is  an  invention,  and  that  the  in- 
vention possesses  utility,  the  word  here  meaning  substantial 
merit  and  usefulness  to  the  public,  not  merely  the  scintilla, 
utilitatis  which  is  sufficient  to  justify  the  grant  of  a  patent 
in  the  first  instance.  He  must  further  show  that  all 
reasonable  means  had  been  taken  to  make  the  invention 
productive ;  and  if  his  case  is  that  he  has  never  been  re- 
imbursed his  expenses,  he  must  give  reasonable  evidence  of 
the  amount  of  his  loss.  If,  however,  there  is  a  balance  of 
profit,  but  to  an  extent  incommensurate  with  his  fair  ex- 
pectations, he  will  be  required  to  show  what  the  real  profit 

o  2 


196  «>F  LCTTEBS  TAT 

has  boon.     \Vln-rr  the  statement  of  the  accounts  in  un- 
satisfactory the  Committee  will  « -itlu  r  direct  that  question 
to  be  taken  l>efore  con>i»U  i  in-^  the  morit-  of  tin   invention, 
or  adjudicate  without  n-fm  nrr  to  them,    if '////•/.'«   /'.;• 
L.  R.  8  P.  (  .    l-Jl  :    v  f  .7  Moore,  P.  C.  ( 
MV./V'x  Mmf,  L.  K.  -I  I'.  C.  s-.i :   SL  C.  fl  Moore,  P.  C.  C. 
N.  8.  300.)      J5ut  where   the  accounts  are  satisfactory  on 
their  face  the  usual  course  is  to  go  into  the  question  of 
merits  lir*t.     (//..M///I/..«'X  /•«/,•»/.  L.  R.  8  P.  C.  402.)     (See 
the  section  on  the  Accounts,  pott.) 

The  merit  and  substantial  utility  of  the  inventionou^ht 
to  be  shown  by  the  testimony  of  persons  of  experience 
and  weight.  ..W.-/'..//.W'x  Patent,  L.  It.  2  P.  C.I;  lirtu' 
•<t,  1  Moo.  P.  C.  49 ;  Stoney'i  Patent,  5  R.  P.  C.  519.) 
\\  lu  re  the  utility  of  the  invention  as  a  whole  was  not 
apparent  the  petition  was  dismissed.  (Willacy's  J 
R.  P.  C.  690.) 

The  petitioner  must  show  that  the  parties  interested 
had  made  efforts  to  bring  the  invention  into  public  use. 

Delay  for  a  prolonged  period  on  the  part  of  an  inventor 
in  attempting  to  bring  his  invention  into  use  is  a  good 
reason  for  refusing  to  grant  an  extension  unless  some 
reasonable  excuse  can  be  shown.  (\nrt»n'.  1  Moore, 

P.  C.  C.  N.  s.  889.) 

If  the  invention  has  not  been  brought  into  use,  in  spite 
of  the  earnest  endeavours  of  the  persons  interested  in 
the  patent,  that  circumstance  will  be  taken  as  a  strong 
presumption  that  it  is  wanting  in  practical  utility,  and,  if 
not  satisfactorily  explained,  the  application  will  be  refused. 
(Snuthn-urth's  Patent,  1  W.  P.  C.  487;  Kollman'x  Patent,  I 
W.  P.  C.  565  ;  Jones'  Patent,  I  W.  P.  C.  57!>  :  B 
Patent,  15  Moore,  P.  C.  885;  J  llan  x  Patent,  L.  R.  1  J 
607  ;  11,-rbrrt'*  Patent,  L.  R.  1  P.  C.  889  ;  Patterson's  Pat,  nf, 
6  Moore,  P.  C.  469 ;  IfiVW*  Patent,  8  Mocre,  P.  C.  N.  s. 
300.)  For  instance,  the  patentee  may  show  that  he  was 
incapacitated  for  business  for  a  long  period  by  an  accident. 
(Ropers  Patent,  4  R.  P.  C.  201.) 

The  presumption  of  non-utility  in  the  invention  may 


EXTENSION  OF  LETTERS  PATENT  197 

also  be  rebutted  by  evidence  showing  its  merit  and  utility. 
(Hughes'  Patent,  L.  E.  4  App.  Gas.  174.)  The  petitioner 
should  be  prepared  with  evidence  to  show  that  there  is  a 
reasonable  probability  of  an  increased  use  or  sale  in  the 
immediate  future. 

It  is  open  to  those  who  oppose  the  extension  to  adduce 
evidence  to  show  that  the  invention  is  wanting  in  novelty 
or  utility,  or  that  it  is  imperfect ;  and  they  may  likewise 
point  out  defects  in  the  specification.  It  is  sufficient  to 
state  the  grounds  of  objection  to  an  extension  without 
stating  the  particulars.  (Ball's  Patent,  4  App.  Cas.  171.) 
But  in  Saxby's  Patent  (L.  E.  3  P.  C.  294)  the  Council  re- 
fused to  go  into  the  questions  of  novelty  or  utility  where 
the  merit  of  the  invention  had  been  proved  and  the  patentee 
had  been  inadequately  rewarded.  Lord  Cairns  said,  'In 
point  of  fact  it  is  not  the  practice  of  this  tribunal  to  decide 
upon  the  novelty  or  utility  of  the  invention,  although  it 
would  abstain  from  prolonging  a  patent  which  was  mani- 
festly bad.'  See  also  Cockings'  Patent  (2  E.  P.  C.  151) ; 
Church's  Patents  (3  E.  P.  C.  95).  However,  in  Stewart's 
Patent  (3  E.  P.  C.  7),  evidence  that  the  invention  had  been 
anticipated  by  previous  patents  and  by  user  of  machines 
was  admitted,  and  the  petition  was  dismissed. 

The  fact  of  improvements  having  been  made  by  other 
persons  in  the  patentee's  invention  after  the  date  of  his 
patent  does  not  afford  ground  of  opposition  to  an  applica- 
tion for  an  extension  if  the  invention  has  a  merit  of  its 
own,  and  if  the  patentee  has  not  reaped  a  benefit  in  pro- 
portion to  that  merit.  (Galloway's  Patent,  I W.  P.  C.  727 ; 
Napier's  Patent,  6  App.  Cas.  174.) 

Nor  is  it  a  valid  ground  of  objection  that  the  manner  of 
working  the  invention  had  been  varied  since  the  filing  of 
the  specification.  (Heath's  Patent,  2  W.  P.  C.  257.) 

If  a  patentee  has  allowed  his  foreign  patents,  obtained 
after  the  date  of  the  British  patent,  to  lapse,  that  is  not  a 
ground  for  refusing  the  prayer  of  the  petition.  (Adair's 
Patent,  6  App.  Cas.  176  ;  and  see  Johnson's  Patent,  L.  E.  4 
P.  C.  79  ;  Hills'  Patent,  1  Moore,  P.  C.  N.  s.  258.) 


EXTENSION  OF  LETTEBS  PATENT 

Bat  if  th«  invention  an  originally  specified  proved  a 
failure  (/M/'x  Piitmt,  2  W.  P.  C.  160),  or  when  it  was  only 
made  completely  successful  by  adopting  improv*  in.  ntH  in- 
troduced  by  other  persons  from  abroad  (Woodcraft*  !'• 

1  W.  P.  C.  740),  the  patentee  was  thought  disentitled  to 
an  extension. 

On  the  other  hand,  if  the  introduction  of  the  invention 

has  been  strongly  opposed  by  persons  engaged  in  the  trade 

'l  P,it,-nt,  1  W.  P.  C.  563  ;    liobert*'  Pat.-nt,  1  W. 

P.  G.  573),  or  if  the  patentee  has  never  been  able  to  raise 

necessary  funds  (»>/'<//</'  .  1  W.  P.  C.  575),  or 

if  he  has  been  engaged  in  heavy  litigation  arising  out  of 

the  patent  (Heath  \\ .  P.  C.  257 ;  HusgrW*  Pa 

2  Moore,  496  P.  C. ;  J^-ttit  Smith'*  Patent,  7  Moore,  1 
133),  these  have  been  considered  good  grounds  for  granting 
an  extension. 

If  litigation,  involving  the  question  of  the  validity  of 
the  patent,  should  be  going  on  at  the  time  of  the  application 
for  a  prolongation,  the  Committee  will  not  go  into  the 
question,  but  •will  assume  the  patent  to  be  valid  (/ 
Patent,  1  Moore,  P.  C.  C.  N.  s.  49),  unless  a  court  of  law 
has  already  decided  against  the  validity  of  the  patent 
(.Inn,**  Patent,  9  Moore,  P.  C.  41),  or,  unless  the  invalidity 
is  beyond  all  reasonable  doubt,  in  which  case  they  will  not 
grant  an  extension.  ( If '<><»/< •;•<;;/ '*  Patent,  2  AV.  P.  C.  30; 
7/iV/x'  Patent,  1  Moore,  P.  C.  C.  N.  s.258  ;  M-  ftM*'  /' 
L.  R.  2  P.  C.  54 ;  > .  >  .  B  Moore,  P.  C.  C.  N.  s.  72 ;  Ktnrarf* 
nt,  3  B.  P.  C.  9.)  If  a  competent  tribunal  should, 
after  the  grant  of  a  new  patent,  decide  that  the  original 
patent  was  invalid,  the  new  patent  will  share  its  fate,  and 
will  be  invalid  likewise.  (Kay's  Patent,  1  W.  P.  C.  571.)  On 
the  hearing  of  the  application  to  extend  the  term  of  II»ni- 
baWs  Patent  (3  Eq.  Bep.  230  ;  S.  ( '.  2  W.  P.  C.  208),  it  was 
said  that  the  grant  of  an  extended  term  is  to  be  considered 
as  a  new  grant  by  new  letters  patent,  subject  to  the  same 
conditions,  open  to  the  same  objections,  and  in  ordinary 
cases  entitled  to  the  same  advantages  as  the  original  grant. 
So  that,  in  point  of  fact,  the  extension  decides  nothing,  one 


EXTENSION   OF  LETTERS  PATENT  199 

way  or  other,  as  to  the  validity  of  the  patent.  And,  there- 
fore, where  it  is  only  a  matter  of  doubt  as  to  the  validity  of 
the  patent — as,  for  example,  where  the  evidence  is  conflict- 
ing— the  extension  will  be  granted,  if  there  appear  good 
grounds  aliiindc  for  that  course. 

When  it  appeared  that  a  patentee  had  agreed  by  deed 
with  a  public  company  to  grant  an  exclusive  licence,  and 
also  covenanted  with  them  to  obtain  at  the  expiration  of 
the  term  a  prolongation  of  the  patent  for  the  same  purpose, 
the  application  for  a  prolongation  was  refused  by  the 
Privy  Council,  on  the  ground  that  the  agreement  was  con- 
trary to  public  policy  and  repugnant  to  the  spirit  of  the 
statute  5  and  6  William  IV.  c.  83.  (Cardwell's  Patent,  10 
Moore,  P.  C.  C.  488.) 


THE  ACCOUNTS. 


'  It  is  the  duty  of  a  patentee  to  take  upon  himself  the 
onus  of  satisfying  the  Committee  in  a  manner  which  admits 
of  no  controversy  of  what  has  been  the  amount  of  remuner- 
ation which  in  every  point  of  view  the  invention  has  brought 
to  him,  in  order  that  their  lordships  may  be  able  to  come  to 
a  conclusion  whether  that  remuneration  may  fairly  be  con- 
sidered a  sufficient  reward  for  his  invention  or  not.  It  is 
not  for  the  Committee  to  send  back  the  accounts  for 
further  particulars,  nor  to  dissect  the  accounts  for  the  pur- 
pose of  surmising  what  may  be  their  real  outcome  if  they 
were  differently  cast ;  it  is  for  the  applicant  to  bring  his 
accounts  before  the  Committee  in  a  shape  which  will  leave 
no  doubt  as  to  what  the  remuneration  has  been  that  he  has 
received.'  (Per  Lord  Cairns  in  lie  Saxby's  Patent,  L.  E.  3 
P.  C.  292  ;  S.  C.  7  Moore,  P.  C.  C.  x.  s.  85.  See  also  Re 
Clark's  Patent,  L.  E.  3  P.  C.  C.  421 ;  8.  C.  7  Moore,  P.  C. 
C.  N.  s.  255  ;  Wi-cld's  Patent,  L.  E.  4  P.  C.  C.  89.)  In  the 
case  of  Yates  and  Kcllett's  Patent  (4  E.  P.  C.  150),  the 
petitioners  applied  at  the  hearing  for  an  adjournment 
to  give  them  time  to  amend  the  accounts,  but  the  appli- 
cation was  refused  and  the  petition  was  dismissed.  The 
accounts  must,  therefore,  be  full,  clear,  unreserved,  and 


:OS  OF  LETTERS  PATEKT 

rly  proved,  i  /////*'  I'<it,  ,,t,  I  Moore,  P.  C.  C.  x.  8.  258.) 
\Vlun  tin  patentee  has  dealt  \\ith  his  patrnt  only  through 
th«  medium  of  assignments  and  licences,  the  work  of  making 
out  correct  and  complete  accounts  ought  to  be  easy.  Hi- 
difficulties  will  be  much  incmised  if  In-  has  hinis*  If «  utered 
ui»on  the  manufacture  of  the  pat.-nt.d  article  along  vith 
anotlier  business,  unless  he  has  had  the  foresight  t«>  \H  rceive 
tht-  propriety  of  keeping  separate  books.  It  i-  d.  -iral-lc 
that  a  patentee  should  from  the  first  keep  his  accounts 
under  the  patent  distinct  from  those  of  any  <>th<  r  business 
in  which  he  maybe  engaged,  so  that  in  tin  «  v.  nt  of  his 
applying  for  an  extension,  he  may  be  able  to  give  satis- 
factory evidence  of  everything  paid  and  received  on  account 
of  the  patent.  (7M/x*  I'ut.nt,  1  Moore,  P.  C.  N.  s.  49; 
Dunn,,,  <u,,l  ]\'ilx,,n'*  I',,t,,,t,  1  R.  P.  C.  257).  In  the  latter 
case  the  petition  was  dismissed  because  the  expenditure 
of  the  patent  business  was  not  sufficiently  distinguished 
from  that  of  the  petitioner's  general  business. 

The  profits  of  every  branch  of  the  manufacture  con- 
nected with  the  patented  invention  must  be  set  forth,  even 
those  of  a  subsidiary  and  independent  business,  if  that  busi- 
ness is  carried  on  for  the  purpose  of  employing  the  product  as 
a  feeder  of  the  patented  manufacture.  On  the  hearing  of  the 
petition  for  a  prolongation  of  A"<  «/.<»'.<  ;•./,'-  /,'  (51  Engineer 
208),  it  appeared  that  the  petitioners  (Nobel's  Explosives 
Company),  who  were  assignees,  had  not  only  manufactured 
dynamite,  the  object  of  the  patent,  but  had  also  made 
nitro-glycerine  (one  of  the  ingredients  of  dynamite)  and 
the  nitric  acid  with  which  that  nitro-glycerine  was  pre- 
pared. In  making  out  their  accounts  in  support  of  their 
case  they  treated  the  matter  as  if  they  had  bought  nitro- 
glycerine in  the  market,  keeping  out  of  view  the  profits 
they  had  made  by  the  manufacture  of  nitric  acid  and  nitro- 
glycerine ;  their  contention  being  that  the  latter  profits 
ought  not  to  be  taken  into  consideration  in  estimating  the 
dynamite  profits.  It  was,  however,  held  that  the  profits 
from  every  branch  of  their  manufacture  must  be  brought 
into  the  account ;  and,  as  the  profits  derived  from  the  sub- 


EXTENSION  OF  LETTEES  PATENT  201 

sidiary  manufacture  had  been  very  large,  the  petition  was 
dismissed  with  costs.    See  also  Bailey's  Patent  (1  E.  P.  C.  1)-. 

Where  the  patent  has  been  assigned  to  a  company,  not 
only  must  the  patentee's  profits  be  shown,  but  the  account 
of  the  company  should  be  deposited.  (Deacon's  Patent,  4 
E.  P.  C.  119.) 

The  profit,  year  by  year,  ought  to  be  shown  (Perkins* 
Patent,  2  W.  P.  C.  6),  including  the  profits  made  by  sales 
abroad.  (Hardy's  Patent,  6  Moore,  P.  C.  441.)  The 
profits  made  under  foreign  patents,  if  any,  must  be  shown. 
(Adair's  Patent,  6  App.  Cas.  176 ;  Newton's  Patent,  1  E.  P. 
C.  177  ;  L.  E.  9  App.  C.  592.)  If  books  of  account  are  not 
forthcoming,  the  petitioner  will  be  required  to  explain  their 
absence.  (Markwick's  Patent,  13  Moore,  P.  C.  C.  310.)  If 
a  patentee  so  deals  with  his  rights  that  he  is  unable  to 
show  what  amount  of  profit  has  been  made  by  working 
the  patent,  or  what  has  been  received  by  licensees  under 
licences,  he  will  be  considered  to  have  disentitled  himself 
to  an  extension.  (Trot man's  Patent,  L.  E.  1  P.  C.  118 ; 
Saxby's  Patent,  L.  E.  3  P.  C.  294.)  In  taking  an  account 
of  the  profits  and  loss  the  patentee  is  entitled  to  charge 
for  personal  expenses  and  loss  of  time  devoted  to  the 
patent  and  in  endeavouring  to  bring  the  invention  into 
use.  (Trotman's  Patent,  L.  E.  1  P.  C.  135 ;  Newton's  Patent,. 
14  Moore,  P.  C.  C.  156  ;  Perkins'  Patent,  1  W.  P.  C.  6 ; 
Carr's  Patent,  L.  E.  4  P.  C.  541 ;  S.  C.  9  Moore,  P.  C.  C* 
N.  s.  379;  Poole's  Patent,  L.  E.  1  P.  C.  514;  Furness' 
Patent,  2  E.  P.  C.  175.)  Travelling  expenses,  salaries  of 
clerks,  and  commissions  on  sales  where  the  patentee  has 
acted  as  salesman  have  been  allowed  (Bailey's  Patent,  1 
E.  P.  C.  1),  and  the  cost  of  making  experiments  has  been 
allowed.  (Kay's  Patent,  1  W.  P.  C.  572.)  In  some  cases 
the  profits  made  by  the  patentee  as  manufacturer  have 
been  permitted  to  be  deducted  (Beits'  Patent,  1  Moore, 
P.  C.  N.  s.  49 ;  Galloway's  Patent,  1  W.  P.  C.  729 ;  Duncan 
and  Wilson's  Patent,  4  E.  P.  C.  119) ;  in  other  cases  suck 
profits  were  not  allowed  to  be  deducted.  (Muntz's  Patent,  2 
W.  P.  C.  121  ;  Saxby's  Patent,  L.  E.  3  P.  C.  292.)  Where 


«»F  LKTTKRS  PATETT 

manufacturer's  profits  are  allowed  to  be  deducted  there  is 
no  BJ>«  eiiic  rule  as  to  the  proportion,  since  they  vary  in 
ditTm-nt  I'usinwees,  but  in  Hill*  1'nt.  nt  (1  Moore,  P.  C.  251) 
ami  in  luitimn  and  HV/x  '1  I:.  1.  C.  260)  two- 

thirds  of  the  net  profits  were  deemed  too  large  a  proportion. 
Law  expenses  incurred  by  the  patentee  in  maintaining  his 
rights  are  in  general  allowed  in  deduction  of  profits,  l»ut 
this  will  not  be  done  \vh.u  the  patentee  has  compromised 
suits  and  given  up  costs  to  which  he  had  an  appan  nt  title. 
(7//7/.S-'  I'atmt.  1  Moore,  1  •.  s.  258.)  In  the  matter 

<  t  H.iil.-ii'x  l'(it>->it  (1  11.  P.  C.  1),  where  the  administrator 
of  a  patentee  claimed  at  the  bar  to  be  allowed  some  deduc- 
tions from  the  profits  not  mentioned  in  the  petition  or 
accounts,  it  was  held  that  no  such  deduction  could  be  made, 
and  evidence  on  the  point  was  inadmissible. 

A  petition  was  dismissed  where  the  accounts  were  in- 
sufficient as  not  distinguishing  the  expenditure  on  that  part 
of  the  invention  which  was  proved  useful.  (W'illacii'x  I'atrnt, 
5  R.  P.  C.  690.) 

GROUNDS   OF   DECISION   UPON   THK   MERITS. 

The  jurisdiction  conferred  upon  the  Judicial  Committee 
l»y  th«  Legislature,  being  an  extraordinary  one,  is  to  be 
exercised,  as  remarked  in  the  Council  Chamber,  only  on 
the  most  special  grounds  alleged  and  proved  in  reference 
to  each  case,  and  at  the  discretion  of  the  Committee  ;  for 
the  extension  of  a  patent  is  a  matter  of  favour,  net  of 
right.  In  considering  their  decision  the  Committee  is, 
according  to  the  twenty-fifth  section  of  the  Act  of  1888,  to 
'  have  regard  to  the  nature  and  merits  of  the  invention  in 
relation  to  the  public,  to  the  profits  made  by  the  patentee 
as  such,  and  to  all  the  circumstances  of  the  case.'  In 
coming  to  a  decision  they  seek  to  meet  the  justice  of  the 
case  with  respect  to  the  meritoriousness  and  public  useful- 
ness of  the  invention,  and  the  adequacy  or  inadequacy 
of  the  patentee's  remuneration,  regard  being  had  to  the 
patentee's  opportunities,  the  adverse  circumstances  with 
which  he  had  to  contend,  and  his  general  management 


EXTENSION  OF  LETTERS  PATENT         203 

of  the  matter.  If  he  has  met  with  loss,  as  the  total  result 
of  his  transactions  under  the  patent,  and  there  has  been 
no  neglect  or  gross  mismanagement  on  his  part,  there  is 
good  primd-facie  ground  for  an  extension  ;  but,  if  a  certain 
amount  of  profit  has  been  derived  from  working  the  patent, 
a  decision  is  less  easily  formed.  The  question  to  be  con- 
sidered, it  has  been  said,  is  not  simply  what  the  patentee 
has  received,  but  what  the  patent  has  gained  or  what  it 
ought  to  have  gained  with  proper  management. 

Assuming  that  the  patentee's  conduct  in  regard  to  this 
part  of  the  case  is  not  open  to  remark,  it  is  obvious  that 
the  merit  of  the  invention  is  now  an  element  to  be  con- 
sidered, since  a  few  hundred  pounds  may  very  well  reward 
an  invention  of  small  utility,  whilst  10,OOOZ.  may  be  an 
inadequate  payment  for  a  discovery  of  great  public  benefit, 
the  working  of  which  has  been  attended  with  heavy  losses 
and  great  anxieties.  The  amount  of  inventive  power  will 
be  taken  into  consideration,  as  well  as  the  amount  of 
time  and  trouble  expended  by  the  inventor  in  making 
experiments,  either  previously  to  his  discovery,  or  in  testing 
it,  or  in  carrying  it  out.  Inventors  have  different  degrees 
of  meritoriousness.  It  is  not,  however,  to  be  assumed, 
that  because  the  step  in  improvement  taken  by  an  inventor 
is  small,  his  merit  is  likewise  small,  and  his  invention 
unimportant.  A  very  small  addition  or  alteration  may 
have  altogether  escaped  notice  until  seized  and  turned  to 
account  by  an  acute  mind,  and  its  adoption  may  lead  to 
most  important  consequences  in  the  manufacture  with 
which  it  is  connected.  The  reward  of  such  an  invention 
ought  not  to  be  made  proportionate  to  its  apparent  insigni- 
ficance. Common  justice  dictates  that  the  benefit  an 
inventor  has  conferred  on  the  public  ought  to  be  regarded  ; 
and  the  advisers  of  the  Crown,  acting  under  this  idea,  will 
.give  him  the  opportunity  of  reaping  a  recompense  in  some 
degree  commensurate  with  the  value  of  the  result.  In 
delivering  judgment  on  an  application  to  the  Privy  Council 
for  an  extension  of  Soames'  Patent  (1  W.  P.  C.  729),  Lord 
Brougham  used  these  words :  '  The  whole  history  of  science, 


204  EXTENSION   OF  LETTERS  PATEKT 

from  the  greatest  discoveries  down  to  the  most  unimpor- 
tant from  the  tlix'ov.  ry  of  the  system  of  grav;  itself, 
and  the  fr;irti»n;il  cal.-ulus  itself,  down  to  tin-  most  trilling 
step  that  has  ever  heen  made — is  one  continued  illustration 
of  the  slow  progress  by  which  th.  human  mind  makes  its 
advance  in  discovery.  It  is  hardly  perceptible,  so  little  has 
been  made  by  any  one  step  in  advance  of  tin-  f<.nn<  r  state 
of  things,  because  generally  you  tin»l  that  just  ln-f..r.  there 
was  something  very  marly  the  same  discovered  or  invented.' 
Hi-  lordship  proceeded  to  say,  that  in  the  case  of  a  new 
principle  or  a  novel  invention — for  instance,  a  new  process 
—the  smallness  of  the  step  did  not  furni>h  any  argument 
against  its  importance,  lint  when  a  new  application  only 
is  under  consideration,  such  an  application  as  mL-h;  easily 
suggest  itself  to  any  person— a  new  application  of  a  well- 
known  simple  process,  which  hod  been  employed  with 
respect  to  other  substances — then,  when  a  patentee  comes 
to  apply  for  an  extension  of  his  patent,  the  smallness  of 
the  step  involved  in  the  patented  invention  will  be  taken 
into  consideration  in  determining  the  length  of  the  <•••. 
sion.  In  this  case  the  invention  consisted  in  an  application 
of  mechanical  pressure  to  separate  the  solid  and  fluid  con- 
stituents of  cocoa-nut  oil.  The  invention  having  l>een  of 
moderate  benefit  to  the  public,  the  moderate  extension  of 
three  years  was  granted  to  the  patentee.  See  also  the 
remarks  of  I*ord  Kitujsdown  on  /////*'  l'nti-nt  (1  Moore,  P. 
C.  C.  N.  s.  258),  and  of  Lord  ('dims  in  ,SVi.//-//'x  I'ntutt 
(L.  R.  8  P.  C.  294),  as  well  as  the  case  of  Itcrotnt'*  /'.//•  m 
.  1  Moo.  P.  C.  418). 

To  justify  an  extension  for  a  longer  time  than  seven 
years  the  invention  must  be  clearly  shown  to  possess  a  very- 
exceptional  degree  of  merit  and  pubh'c  usefulness.  In  the 
cases  of  M»n<-rii'ft"x  ]'<it'-nt  (22,  Iron  85),  llutlimi'*  I'at.nt 
(Pract.  M.  J.,  2nd  ser.,  8, 159),  and  Stoney's  Pat.  ///  <r,  R.  P. 
C.  618),  a  prolongation  of  ten  years  was  recommended.  It 
is  very  seldom  indeed  that  the  full  term  of  fourteen  years 
is  granted.  (Mitchell »  Patent,  80  Newton,  L.  J.  c.  s.  356.) 

In   the  case  of    a   patent  obtained   for  an   invention 


EXTENSION  OF  LETTERS  PATENT  205 

imported  from  abroad,  \vhich  invention  had  been  previously 
patented  in  a  foreign  country,  the  British  patent  became 
void  under  the  twenty-fifth  section  of  the  15  and  16  Yict. 
c.  83  at  the  expiration  of  the  foreign  patent ;  and  when 
application  for  a  prolongation  of  such  a  patent  was  made, 
it  was  refused.  (Aubc's  Patent,  9  Moo.  P.  C.  43 ;  Poolers 
Patent,  L.  E.  1  P.  C.  514 ;  Adair's  Patent,  L.  E.  6  A.  C. 
176  ;  Hills1  Patent,  1  Moo.  P.  C.  N.  s.  258.)  And  this  rule 
was  even  extended  to  cases  of  patents  for  imported  inven- 
tions, when  the  foreign  patent  was  dated  shortly  after  the 
British  patent.  (Xewton's  Patent,  14  Moore,  P.  C.  C.  156  ; 
NormamVs  Patent,  L.  E.  3  P.  C.  193 ;  S.  C.  6  Moore,  P.  C. 
C.  N.  s.  477 ;  Blake's  Patent,  L.  E.  4  P.  C.  535 ;  S.  C.  9 
Moore,  P.  C.  C.  N.  s.  373.) 

This  Act  having  been  repealed,  no  objection  can  now  be 
founded  on  the  authority  of  these  decisions  with  reference 
to  patents  issued  under  the  new  Act ;  nor,  apparently,  with 
reference  to  patents  previously  issued,  which  had  not  been 
avoided  by  the  statute  of  Victoria.  But  if  any  patent 
granted  before  the  commencement  of  the  new  Act  had 
been  rendered  void  by  the  operation  of  the  statute  before 
that  date,  then  it  would  seem  that  the  cited  decisions 
would  still  be  applicable  in  case  an  extension  of  the  patent 
were  petitioned  for. 

Before  the  Act  of  1883  was  passed,  it  had  been  decided 
that  the  Crown,  at  any  time  before  the  Great  Seal  was 
affixed,  could  countermand  the  warrant  for  sealing,  upon  a 
proper  case  being  made  out.  Thus  where  patentees  had 
applied  for  a  prolongation  of  their  patent,  and  had  obtained 
a  recommendation  from  the  Judicial  Committee  of  the 
Privy  Council,  upon  which  an  order  was  drawn  up  for  a 
prolongation,  a  petition  was  afterwards  presented  to  the 
•Crown,  seeking  to  revoke  this  order  ;  and  this  being  re- 
ferred to  the  Judicial  Committee,  it  was  held  that  this 
Committee  had  authority,  under  3  and  4  William  IV.  c.  4, 
s.  4,  to  entertain  such  a  petition,  and  to  recall  the  warrant 
for  sealing  the  letters  patent.  (Schlumberger's  Patent,  9 
Moore,  P.  C.  C.  1.) 


EXTENSION  OF  LETTERS  PATENT 


TIIE   NEW   PATENT. 

If  the  Judicial  Committee  reports  favourably  on  the 
petition  the  patent  may  be  extended  under  sect.  25  of  tbo 
Act  of  1883,  for  seven,  or  in  exceptional  circumstances  for 
fourteen,  years.  Or  a  new  patent  may  be  granted  for 
time  therein  mentioned  with  any  restrictions,  conditions, 
and  provisions  th;it  the  Commit t<  -e  think  fit  to  insert  there- 
in. If  a  new  patent  is  issued,  as  is  usually  the  case,  it  is 
dated  the  day  after  the  expiration  of  the  original  term,  and 
it  \vill  be  subject  to  all  the  provisions  of  the  Act  of  1888. 
If  anyone  should  use  the  invention  in  the  interval  tat  ween 
the  expiration  of  the  original  term  and  the  grant  of  the 
new  patent,  he  is  not  liable  for  an  infringement.  More- 
over, those  who  may  have  invested  capital  in  working  it 
during  that  interval  may  attend  before  the  Committee,  and 
oppose  the  application,  or  prefer  a  claim  to  have  their  acts 
protected  and  their  expenditure  made  good.  (Itussell  v. 
Ledsam,  14.  M.  and  W.  574.) 

"Where  a  patent  seems  deserving  of  prolongation  only 
in  respect  of  one  head  of  invention  out  of  several,  the  pro- 
longation will  be  granted  solely  with  reference  to  that  head. 
\m  r*  1'tit.nt,  8  Moore,  P.  C.  C.  282;  Lee's  Patent,  10 
Moore,  P.  C.  C.  226:  Napier**  /'•/,/,(;  Aj>p.  Cas.  174; 

Church'*  Patent*,  8  R.  P.  C.  102.) 

In  the  case  of  two  cognate  patents  which  had  dif- 
ferent terms  to  run,  it  was  ordered  that  the  extensions 
granted  should  be  such  that  they  should  both  expire  on 
the  same  day.  (Johnson's  and  Atkinson's  Patents,  L.  II. 
5  P.  C.  87.) 

Where  the  invention  is  one  of  great  merit,  and  the 
patentee  has  assigned  his  interest  in  it  to  another  person 
for  a  sum  which,  looking  at  the  profits  likely  to  be  derived 
from  working  the  invention,  appears  an  inadequate  con- 
sideration, the  Privy  Council  will  see  that  the  patentee 
receives  further  reward.  With  this  view,  a  condition  IB 
sometimes  introduced  into  the  new  patent,  making  it  void 
in  case  a  fixed  annual  sum,  or  a  certain  share  in  the  profits, 


EXTENSION  OF  LETTERS  PATENT  207 

be  not  paid  to  the  patentee  by  the  assignee.  (Whitehouse's 
Patent,  1  W.  P.  C.  473 ;  Hardy's  Patent,  6  Moore,  P.  C.  C. 
441  ;  Morton's  Patent,  51  Eng.  274.) 

So  also  where  a  patentee  had  mortgaged  his  patent, 
and  he  and  his  mortgagees  asked  for  a  prolongation,  it  was 
granted  to  the  patentee  alone.  (Bovill's  Patents,  1  Moore, 
P.  C.  C.  N.  s.  348.)  But  in  Church's  Patents  (3  B.  P.  C. 
95)  the  patentee  undertook  to  give  the  mortgagee  the  same 
security  over  the  new  patents  that  he  had  over  the  old. 
Again,  where  the  petition  had  been  presented  by  the 
patentee  and  the  assignee  of  a  moiety  of  the  patent,  and 
the  patentee  had  died  before  the  hearing,  a  prolongation 
was  granted  on  the  condition  that  the  assignee  should  hold 
one  moiety  of  the  new  term  on  trust  for  the  personal  repre- 
sentatives of  the  deceased  patentee.  (Herbert's  Patent,  L.  B. 
1  P.  C.  399.)  Other  special  conditions  are  sometimes  in- 
serted in  the  new  letters  patent :  for  example,  that  the 
patented  article  should  be  sold  to  the  public  at  a  certain 
price  (Hardy's  Patent,  6  Moore,  P.  C.  C.  441) ;  that  licences 
should  be  granted  on  certain  terms  (Mallet's  Patent,  L.  B. 
1  P.  C.  308 ;  S.  C.  4  Moore,  P.  C.  C.  N.  s.  175) ;  or  that 
the  Admiralty  should  have  the  privilege  of  using  the  inven- 
tion (in  this  case  an  improved  propeller  for  steam  and  other 
vessels)  without  licences  from  the  patentee.  (Pettit  Smith's 
Patent,  1  Moore,  P.  C.  C.  133.)  But  in  the  cases  of  Lan- 
caster's Patent  (2  Moore,  P.  C.  C.  N.  s.  189)  and  Carpenter's 
Patent  (ibid.  191)  the  Judicial  Committee  refused  to  insert 
this  latter  condition.  For  instances  of  other  special  con- 
ditions introduced  into  the  new  patent,  see  Bodmer's  Patent 
(8  Moore,  P.  C.  C.  282) ;  Normandy's  Patent  (9  Moore, 
P.  C.  C.  452). 

When  a  prolongation  of  a  patent  term  has  once  been 
granted,  the  jurisdiction  of  the  Judicial  Committee  is 
exhausted,  and  they  have  no  power  to  entertain  an  appli- 
cation for  a  further  extension.  (Gouchcr's  Patent,  2  Moore, 
P.  C.  C.  N.  s.  532.) 

When  an  order  has  been  made  by  her  Majesty  in 
Council  for  the  extension  of  a  patent,  or  for  the  grant  of  a 


KNSION  OF  LKTTERS  PATENT 

new  patent,  an  office  copy  of  sucl*  be  forthwith 

h  ft    at  tin    Patent  OtVx •••  that  it  may  IKS  entered  in    the 
register.    (See  RuK  74  oi  the  Patents  Roles  1890.) 

COSTS. 

The  seventh  sub-section  of  tin    •  fth  section  of 

ih'  1'atrnts  Act  of  1883  directs  that  the  costs  of  all  parties 
of  and  incident  to  proceedings  for  the  extension  of  a  patent 
shall  be  in  the  discretion  of  the  Judicial  Committee,  and 
the  orders  of  the  Committee  respecting  costs  shall  be-  en- 
forceable as  if  they  were  orders  of  a  division  of  tin  i 
Court  of  Justice. 

\\li.-re  the  ground  of  opposition  to  a  patentee's  applica- 
tion is  frivolous,  costs  have  been  awarded  to  him ;  Init 
where  the  case  is  difficult  and  doubtful  and  there  is  fair 
ground  for  opposition  costs  will  not  be  given  to  a  success- 
ful petitioner.  (Church's  P«t,-nt*,  \\  11.  P.  C.  95.)  On  the 
other  hand,  if  a  successful  opposer  has  conducted  his  case 
in  a  proper  manner,  he  may  obtain  his  costs.  (JlonibaW* 
•t,  9  Moore,  P.  C.  C.  894  ;  J,>hn*<,n'«  ]',it. •///,  L.  R.  4 
P.  C.  75;  Hills'  Patent,  1  Moore,  P.  C.  (.  x.  s.  271; 
inv/./'x  Put.-nt,  L.  R.  4  P.  C.  89  :  9  Moore,  P.  C.  C. 

•K.  s.  300 ;  \,-u-tnn'x  Patent,  51  Eng.  208.)  Costs  of  opposi- 
tion  have  been  given  against  a  petitioner  who  abandoned 
iiis  application.  (Mackintnxh's  Pat.-nt,  1  W.  P.  C.  739; 
II. ruin's  r<itmt,  7  Moore,  P.  C.  503;  Milnrr't  Patent, 
'.>  Moore,  P.  C.  C.  39;  M.nynn-limicn*  Patent*,  3  It.  P.  C. 
212.) 

It  is  not  unusual  for  the  Privy  Council  to  award  opposers 
a  lump  sum  for  costs,  to  be  (when  more  than  one)  divided 
between  them.  In  the  case  of  Sen-ton  g  i  ~>  1  Eng. 

208),  the  opposers  were  so  awarded  1,0007.  In  the  case  of 
Johnson' t  Patent  (L.  R.  4  P.  C.  C.  83),  the  opposers  were 
ordered  to  receive  500/.,  and  in  Ball's  Patent  1 1  App.  Cas. 
171)  an  order  was  made  for  payment  of  400/.  to  the  opposers 
in  lieu  of  costs. 

By  the  Privy  Council  Rules  in  patent  cases,  the  taxing 


EXTENSION  OF  LETTERS  PATENT         209 

officer  is  empowered  to  allow  or  disallow  at  his  discretion 
all  payments  made  to  persons  of  science  or  skill  examined 
as  witnesses  to  matters  of  opinion  chiefly. 

SELECTED   DECISIONS   OF   THE   PRIVY   COUNCIL. 

The  following  cases  have  been  selected  to  illustrate  what 
has  been  said  with  reference  to  the  considerations  guiding 
the  Judicial  Committee  in  arriving  at  a  conclusion  in  regard 
to  the  term  of  extension  under  different  circumstances. 

On  an  application  for  an  extension  of  a  patent  granted 
to  James  Kay,  for  improved  machinery  for  preparing  and 
spinning  flax,  it  was  shown  that  the  patentee  had  expended 
500/.  in  experiments,  500Z.  in  obtaining  his  patent,  2,200L 
in  law  expenses,  and  that  he  had  made  about  6,800Z.  profit. 
The  invention  was  one  of  great  utility,  was  used  by  nearly 
all  the  flax-spinners  in  the  kingdom;  but  looking  at  the 
sum  already  cleared  by  the  patentee,  it  was  thought  that  a 
prolongation  for  three  years  would  satisfy  the  justice  of  the 
case.  (Kay's  Patent,  I  W.  P.  C.  568.) 

Richard  Roberts  obtained  a  patent  for  improvements  in 
spinning-jennies,  the  value  of  which  was  so  great  that, 
during  the  last  three  or  four  years  of  the  original  term, 
5,000/.  a  year  had  been  made  by  the  patentee.  In  conse- 
quence, however,  of  piracies,  of  combinations  amongst  work- 
people, but  chiefly  of  a  fire,  supposed  to  have  been  the  act 
of  an  incendiary,  which  destroyed  the  patentee's  premises, 
and  entailed  a  loss  of  10,OOOL  beyond  the  insurance,  the 
profits  did  not  reach  the  amount  of  loss  by  several  thousand 
pounds.  The  Committee  of  the  Privy  Council,  guided  by 
the  ingenuity  of  the  invention,  and  the  peculiar  character 
of  the  resistance  to  its  introduction,  were  of  opinion  that 
seven  years'  prolongation  was  merited.  (Roberts'  Patent, 
1  W.  P.  C.  573.) 

L.  W.  Wright  applied  for  an  extension  of  his  patent  for 
improvements  in  bleaching  apparatus,  and  gave  evidence 
before  the  Committee  of  his  pecuniary  embarrassments, 
and  the  disputes  which  had  arisen  out  of  his  partnership 
with  various  persons ;  which  embarrassments  and  disputes 

p 


210  EXi  LETTERS  PATENT 

had  prevented  th«-  introduction  of  the  invention  to  the 
trade.  He  showed  that  the  in\.  ntion  had  been  successfully 
practised  by  several  bleachers,  but  that  he  had  hitherto 
derived  nn  benefit  wl  :'r«>iu  it.  The  Committee  re- 

ported that  it  would  be  proper  to  prolong  the  term  for 
seven  years.  (JIV/'-////'*  J'.it.nt,  1  \\ .  r.  < 

A  patent  for  a  new  method  <>f  pr« -pai-inx  iron  plates  for 
tinning  was  granted  in  1839  to  Thomas  Morgan,  who, 
being  unable  to  \\"rk  the  invention,  had  sold  his  patent 
right  for  200/.  to  persons  who  applied,  in  conjunction  with 
the  patentee,  for  an  extension  of  the  term.  The  assignees 
had  made  a  profit  of  about  1,000/.  a  year  for  three  years, 
and  the  patentee,  in  addition  to  the  sum  received  from  them, 
was  making  about  2/.  a  week  out  of  the  patent.  The 
invention  appearing  to  possess  only  a  moderate  degree  of 
merit,  the  Committee  thought  that  the  benefit  received  by 
the  patentee  and  his  assignees  was  a  sufficient  reward,  and 
they  refused  the  application.  (M»riinn'x  /'<//<  •/</,  1  "NY.  P.  C. 
787.) 

Beanlands*  petition  for  an  extension  of  his  patent  for 
quadrants  for  opening,  shutting,  and  fastening  windows 
was  dismissed,  on  the  ground  that,  the  accounts  having 
shown  that  his  profits  amounted  to  TOO/.,  and  those  of  his 
licensees  to  upwards  of  300/.,  the  patentee  had  been  ade- 
quately remunerated,  considering  the  small  merit  of  the 
invention  and  the  absence  of  great  public  utility.  (Heart- 
lands' Patent,  4  K.  P.  C.  489.) 

A  patent  for  printing  yarns  of  any  fibrous  materials 
was  granted  in  1828  to  Bennet  Woodcroft,  who,  on  the 
expiration  of  the  original  term,  applied  for  an  extension. 
The  patented  process  gave  to  cloth  made  of  yarn,  printed 
by  it,  a  peculiarly  clouded  appearance,  and  the  invention 
gave  rise  to  the  manufacture  of  clouded  silks  and  fabrics. 
During  the  first  four  years  of  the  patent  7,000/.  were 
realised  under  it.  Certain  duty,  however,  was  taken  off 
other  goods,  and  from  this  cause  and  others  a  large  capital 
invested  in  working  the  patent  ceased  to  be  profitable,  and 
the  patent  right  became  of  small  value.  At  a  subsequent 


EXTENSION  OF  LETTERS  PATENT  211 

time  the  invention,  under  an  improved  form,  was  stated  to 
have  become  of  considerable  value,  and  it  was  thought 
proper  to  apply  for  an  extension  of  the  patent.  But  the 
Committee,  having  regard  to  the  amount  of  profit  already 
realised,  and  to  the  fact  that  the  invention,  in  its  improved 
and  valuable  form,  was  introduced  from  abroad  by  other 
persons  than  the  patentee,  refused  the  application. 

In  1840  Orlando  Jones  obtained  a  patent  for  improve- 
ments in  the  manufacture  of  starch.  His  method  consisted 
in  applying  a  weak  solution  of  caustic  alkali  to  rice.  It 
was  shown,  at  the  hearing  of  an  application  for  an  extension 
of  the  patent,  that  the  principle  of  the  invention  had  been 
discovered  by  another  person  prior  to  the  date  of  Jones' 
patent,  although  Jones  was  not  aware  of  the  fact.  The 
invention  being  thus  shown  to  have  no  novelty,  the  appli- 
cation was  refused,  and  costs  to  the  amount  of  100Z.  were 
decreed  against  the  petitioner. 

On  the  application  for  an  extension  of  Derosne's  patent, 
for  improvements  in  refining  sugar,  it  appeared  that  the 
patentee's  net  profit  had  been  about  3,300L  But  the 
benefit  to  the  public  was  so  great,  being  appreciable  in 
every  pound  of  sugar  consumed,  that  an  extension  of  six 
years  was  granted.  (Derosne's  Patent,  2  W.  P.  C.  1.) 

G.  F.  Muntz  applied  for  an  extension  of  his  patent  for 
Improvements  in  the  manufacture  of  sheathing  for  ship 
bottoms,  and  showed  that  he  had  made  55,OOOZ.  by  the 
manufacture  during  the  existence  of  the  patent.  The 
applicant  contended  that  this  sum  did  not  represent  his 
profit  as  an  inventor  and  patentee,  but  his  profit  as  a 
manufacturer.  But  the  Committee  of  the  Privy  Council 
said  it  was  impossible  to  sever  these  two  heads  of  profit. 
It  was  by  means  of  the  patent  that  he  had  made  the 
profit.  It  had  given  him  a  monopoly  preference ;  because 
as  patentee  he  was  enabled  to  sell  and  trade  in  a  manner 
which,  but  for  his  invention  and  his  patent,  he  could 
not  have  done.  The  application  for  a  prolongation  of 
the  patent  was  refused.  (Muntz's  Patent,  2  W.  P.  C.  113.) 
See  also  Hills'  Patent  (1  Moore,  P.  C.  C.  N.  s.  258)  ; 

f  2 


212  EXTENSION  OP  LETTERS  PATENT 

Saxby'i  Patent  (L.  R.  8  P.  C.  ±'-!     v  <     7  Moore,  1'.  < 
N.  B.  82). 

A  patent  was  obtained  in  1831  by  A.  M.  Perkins  for 
improvements  in  an  apparatus  for  heating  air  in  luiiMings, 
heating  fluids,  Arc. ;  ami  in  1*1."  In  Applied  for  an  extension, 
on  the  ground  that  he  had  been  inadequately  rewarded. 
The  ingenuity  of  the  imi-ntion,  and  its  application  to  a 
great  number  of  purposes,  having  been  shown,  the  accounts 
were  imvhti^aUd  ;  when  it  appeared  that  there  had  bee» 
a  profit  of  l.'.lTo/.  upon  gross  receipts  to  the  amount  of 
''•  l.'.'iiO/.  The  patentee  claimed  further  to  reduce  the  sum 
reprt-.-riitiiiL,'  his  profits,  by  deducting  ">(>()/.,  the  cost  of 
experiment,  2, TOO/,  interest  at  five  per  cent,  on  the  average 
amount  of  capital  employed,  and  5,400/.  for  an  allowance  of 
400/.  a  year  to  the  patentee  for  his  personal  super int<  mlence 
of  the  business.  These  sums  reduced  the  profits  to  '• 
net.  An  extension  of  five  years  was  granted,  the  invention- 
being  ingenious  and  useful.  (2  W.  P.  C.  7). 

An  application  for  the  extension  of  a  patent  for  im- 
provements in  the  manufacture  of  steel  was  opposed  on  the 
ground  that,  whereas  the  patented  process  consisted  in 
the  addition  of  carburet  of  manganese  to  the  crucible,  it 
had  been  subsequently  discovered  that  a  better  process  of 
making  steel  was  to  place  carbonaceous  matter  and  man- 
ganese separately  in  the  crucible,  and  this  process  obtained 
generally  in  practice.  The  Privy  Council  thought  that  the 
merit  of  the  original  invention  was  not  thereby  materially 
detracted  from,  and  they  granted  an  extension  for  seven 
years.  In  granting  so  long  a  time,  the  litigation  going  on 
in  the  courts  of  law  was  taken  into  account,  as  it  was 
thought  probable  that  some  time  would  elapse  before  the 
litigation  would  terminate  and  the  patentee's  representa- 
tives have  the  benefit  of  the  extension  granted.  (Heath'r 
Patent,  2  W.  P.  C.  257). 

Whitehouse,  an  ingenious  mechanic,  procured  a  patent 
for  improvements  in  the  manufacture  of  iron  tubes,  which 
he  assigned  to  his  master,  Russell,  who  laid  out  14.000/.  in 
works  to  carry  out  the  manufacture.  The  tubes  were  in 


EXTENSION  OF  LETTERS  PATENT  213 

great  demand,  being  applicable  to  a  variety  of  new  purposes ; 
but,  as  the  manufacture  was  simple,  many  expedients  were 
adopted  for  evading  the  patent,  and  Mr.  Eussell  was  in- 
volved in  much  litigation,  in  consequence  of  which,  com- 
bined with  the  loss  incurred  by  surreptitious  manufacture 
and  sale,  his  profits  were  very  considerably  reduced. 
There  was  evidence  to  show  the  value  and  importance  of 
the  invention,  the  losses  he  had  suffered  from  infringements, 
and  the  great  reduction  that  would  take  place  in  the  value 
of  the  premises  and  machinery  (much  of  which  was  fitted 
only  for  the  particular  manufacture)  if  the  patent  were 
thrown  open.  He  further  showed  that  his  life  had  been 
endangered  by  the  anxiety  of  certain  law  proceedings. 
One  witness  stated  that,  if  the  manufacture  were  thrown 
open,  it  would  hardly  be  worth  following :  the  process  was 
so  beautifully  simple,  that  it  would  almost  be  within  the 
reach  of  any  person  of  capital.  The  net  profits  amounted 
to  about  13,OOOZ. ;  but  this  was  shown  to  be  not  much 
greater  than  the  ordinary  profits  on  stock  without  the  pro- 
tection of  a  patent.  The  Committee  thought  the  patent 
ought  to  be  extended  for  six  years,  the  original  patentee 
receiving  500L  a  year  out  of  the  profits  for  that  time. 
{tVhitehouse's  Patent,  I  W.  P.  C.  473.) 

A  patent  for  forging  and  shaping  small  articles  in  metal 
was  obtained  by  Mr.  Ryder  in  1841  :  when  he  applied  for 
an  extension,  he  pleaded  that  though  the  profits  had  been 
7,000£.,  they  had  only  been  made  during  the  last  four 
years.  This,  however,  was  held  to  be  no  ground  for  the 
application  in  the  face  of  the  large  sum  realised,  and  the 
petition  was  dismissed.  (Ryder's  Patent,  '  Pract.  Mech. 
Journ.'  vol.  vii.  p.  238.) 

In  Ruthvcn's  Patent  ('  Pract.  Mech.  Journ.'  2nd  Series, 
vol.  viii.  p.  159),  which  was  a  patent  for  improvements  in 
the  propulsion  of  vessels,  the  invention  was  proved  to  be 
of  very  great  merit,  and  to  have  failed  in  being  brought 
into  general  use  through  circumstances  altogether  inde- 
pendent of  the  will  and  without  the  fault  of  the  inventor, 
who  had  not  merely  derived  no  profit,  but  had  suffered 


-Ml  EXTENSION  OF  LETTERS  PAT  i 

considerable  loss  from  his  patent,    h  was  shown,  moreover, 
that   tin-  Admiralty  had  then  lately  in.stitut.  .1 
with  a   view  to  the  adoption  of  the  invention,   nn<l  that 
several  friends  of  the  inventor  illing  to  provide  large 

capital  for  working  the  invention,  should  a  prolongation 
be  obtained.  Evidence  was  also  given  that  from  the  nature 
of  the  invention  it  would  necessarily  be  a  long  time  before 
its  merit  could  be  properly  brought  before  the  puhlic. 
Under  these  circumstances  the  Judicial  Committee  (stating 
that  they  considered  the  case  exceptional)  granted  a  pro- 
longation for  the  unusual  period  of  ten  years. 

In  the  case  of  Sillar's  Patent  (Goodeve's  cases,  p.  581),, 
it  appeared  that  the  patent  had  been  sold  by  the  patentees- 
to  a  Joint  Stock  Company,  who  had  paid  them  a  sum 
which  seemed  to  be  commensurate  with  the  value  of  the 
invention.  The  company  had  afterwards  floated  their 
shares  in  the  market,  and  had  thereby  made  considerable 
profit.  They  then  applied  for  an  extension  of  the  patent, 
but  it  was  refused,  although  they  had  been  considerable 
losers  by  working  the  invention. 

Major  Childs  obtained  a  patent  in  1869  for  improve- 
ments in  the  manufacture  of  bread  and  biscuits.  By  this 
invention  a  nutritious  aerated  bread  could  be  made  by 
machinery  with  regularity  and  certainty.  Down  to  1875 
the  inventor  had  failed  in  his  endeavours  to  get  the  inven- 
tion fairly  worked,  hut  in  that  year  he  became  chairman 
of  the  Aerated  Bread  Company,  and  let  them  have  the  use 
of  his  patent.  It  was  not  until  1883  that  a  large  central 
manufactory  was  started  in  London  for  the  making  of  bread 
by  his  process.  He  received  a  salary  of  600/.  as  chairman 
and  managing  director  of  the  company,  which  was  paying 
8  per  cent,  on  the  shares,  of  which  he  held  12,000.  The 
counsel  appearing  for  the  Crown  estimated  that  the  inventor 
had  made  a  profit  under  the  patent  of  between  20,000/. 
and  80,000/.,  including  the  rise  in  the  value  of  the  shares 
held  by  him.  The  Judicial  Committee  were  satisfied  that 
the  invention  possessed  considerable  merit,  and,  although 
the  inventor  had  made  for  the  last  five  years  a  profit  which 


EXTENSION  OF  LETTERS  PATENT         215 

was  increasing,  they  came  to  the  conclusion  that  he  had 
not  been  sufficiently  remunerated,  and  a  prolongation  for 
five  years  was  granted.  (Childs's  Patent.  The  '  Times,' 
Dec.  1883.) 

A  petition  for  a  prolongation  of  Deacon's  two  patents 
obtained  for  improvements  in  measuring  the  flow  of  water 
through  pipes  was  presented  in  1887.  The  accounts  showed 
that  the  patentee  had  made  a  profit  of  6,000£.,  and  that 
he  had  besides  an  interest  in  a  public  company  to  which 
the  patents  had  been  assigned.  The  invention  being  very 
meritorious,  an  extension  of  three  years  was  recommended. 
(4  E.  P.  C.  119.) 

Nussey  and  Leachman  in  1876  obtained  a  patent  for 
improvements  in  machinery  for  pressing  fabrics.  An  ap- 
plication for  its  extension  was  heard  in  December  1889, 
when  their  lordships,  remarking  that  they  could  not  say 
there  had  been  no  utility,  but  finding  there  had  been  a  net 
profit  of  4,OOOZ.,  and  looking  at  the  degree  of  merit  and 
amount  of  remuneration,  declined  to  report  that  the 
patentees  had  not  been  adequately  remunerated.  It  was 
also  stated  that  the  Privy  Council  had  taken  into  considera- 
tion the  fact,  although  they  had  not  decided  the  case 
wholly  upon  it,  that  the  petitioners  had  got  new  letters 
patent  for  improvements  upon  the  patent,  which  had 
almost  shut  out  the  use  of  that  patent.  (7  R.  P.  C.  22.) 

The  exceptional  period  of  ten  years  was  granted  in  the 
case  of  Stoney's  Patent  (5  E.  P.  C.  518),  where  it  appeared 
that  the  invention  possessed  considerable  merit,  but  had  a 
very  small  scope  for  its  employment,  whilst  the  patentee 
had  derived  no  profit  from  it.  This  was  a  patent  for  im- 
provements in  sluices  and  floodgates.  Mr.  Justice  Groves' 
instructive  judgment  may  be  usefully  consulted  with  re- 
ference to  the  case  which  a  petitioner  for  an  extension 
ought  to  make  out  before  the  Privy  Council. 


CHAPTER   XV. 

ASSIGNMENTS  AND  LICENCES. 

POWER  both  to  assign  and  to  license  is  l.y  implication  given 
to  the  patentee  by  the  patent. 

It  is  desirable  to  register  both  assignments  and  lie 
as  soon  as  may  be  after  their  execution.  If  his  assignment 
is  not  registered  an  assignee  cannot  maintain  an  action 
for  an  infringement  against  third  parties  except  licensees 
from  the  assignor  subsequent  to  and  \\ith  notice  of  the 
assignment.  Sec  t'hollct  v.  //.;/////</;/»  <7  E.  <t  B.  636); 
Uassall  v.  Wright  (L.  R.  10  Eq.  510),  cases  under  the  old 
law.  See  the  Chapter  on  Registration,  and  Rules  G7-7ii 
and  77  of  the  Patents  Rules  1890. 

Rules  67  to  72  prescribe  a  somewhat  complicated  system 
of  registry  for  assignments  and  licences.  In  all  cases  tin  i v 
must  be  a  request  in  writing  to  the  Comptroller  to  register, 
and  the  original  document  to  be  registered,  together  with 
an  attested  copy,  must  be  Kit  with  the  Comptroller.  The 
practice  of  registration  under  the  Act  of  1852  was  quite  as 
effective  and  much  more  simple. 

ASS  I 

To  be  a  valid  instrument,  an  assignment  ought  to  be  a 
deed  under  hand  and  seal.  It  is  usual  to  introduce  into 
assignments  covenants  on  the  part  of  the  patentee  that  he 
is  the  true  and  first  inventor,  and  that  the  patent  is  valid. 
In  those  cases  where  the  assignor  does  not  part  with  his 
entire  interest  in  and  under  the  patent  it  may  be  well  to 
insert  a  covenant  binding  him  not  to  seek  leave  to  amend 
the  specification  or  drawings  without  the  written  consent  of 
the  assignee. 


ASSIGNMENTS  217 

Under  the  twenty-fifth  section  of  the  Patents  Act  of  1852, 
a  patent  obtained  in  the  United  Kingdom  for  an  invention 
previously  patented  in  a  foreign  country  came  to  an  end 
at  the  expiration  of  the  foreign  patent.  But  as  this  provi- 
sion has  not  been  inserted  in  the  Patents  Act  of  1883,  it  is 
not  now  of  importance  for  an  assignee  to  see  that  the 
foreign  patent  is  kept  on  foot,  although  when  the  assign- 
ment deals  with  a  British  patent  obtained  under  the  Act  of 
1852  it  is  still  incumbent  upon  him  to  see  that  the  foreign 
patent  had  not  expired  prior  to  January  1,  1883. 

A  patentee  is  empowered,  by  the  thirty-sixth  section  of 
the  Act  of  1883,  to  assign  his  patent  for  any  place  in  or 
part  of  the  United  Kingdom  or  Isle  of  Man  as  effectually 
as  if  the  patent  were  originally  granted  to  extend  to  that 
place  or  part  only. 

This  provision  seems  to  be  of  very  doubtful  utility,  and 
prudent  patentees  may  well  hesitate  to  make  assignments 
under  it.  To  assign  a  patent  for  a  place  or  district  might 
not  improbably  land  both  parties  in  grave  difficulties  which 
do  not  all  lie  on  the  surface. 

It  is  no  answer  to  an  action  to  enforce  a  contract  for 
the  purchase  of  a  patent  for  a  stipulated  sum  (Hall  v.  Conder 
2  C.  B.  N.  s.  22)  to  plead  that  the  patent  is  wholly  worth- 
less and  of  no  utility,  and  that  the  subject-matter  of  the 
patent  was  not  the  novel  invention  of  the  plaintiff,  there 
being  no  proof  of  fraud,  and  no  express  warranty.  Such  a 
contract  was  held  merely  to  have  the  effect  of  placing  the 
purchaser  in  the  same  situation  as  the  seller  was  with  refer- 
ence to  the  patent,  and  the  purchaser  is  bound  to  take  it 
with  all  its  faults.  This  being  so,  it  is  desirable  to  consider 
whether  or  not  an  express  warranty  of  the  patent  should 
not  be  introduced  into  contracts  of  this  nature.  See  also 
Smith  v.  Nealc  (2  C.  B.  N.  s.  67). 

The  purchaser  ought  invariably  to  have  a  search  made 
by  a  competent  person  at  the  Patent  Office  and  elsewhere 
as  to  the  novelty  of  the  invention,  prior  to  his  entering  into 
a  contract  for  the  purchase. 

One  of  two  or  more  joint  patentees  cannot  assign  more 


218  ASSIGNMENTS 

than  his  share  of  the  patent.     (/•/.'    //         /  ;  'on's 

.  I;,  s  K,,.  i, 

The  assignee  of  part  of  a  patent  separate  from  other 

parts  may  1-rin^  his  action  for  an  infri  :  of  nu<  h  part 

\\ithout  joining  as  plaintiffs  those  persons  who  have  di 
interests  in  the  other  parts,  but  have  no  interest  in  the 
damages  sought  to  be  recovered.  «  hmnncHtf  v.  Mallrt,  7  C. 
B.  N.  s.  209.)  This  decision  was  mentioned  with  approval 
by  the  Court  wlu-n  <1«  li\»  ring  judgment  in  the  case  of 
Walton  v.  I^arater  (8  C.  B.  N.  s.  184),  where  it  was  un- 
successfully contended  that  the  assignee  of  an  undivided 
share  of  a  patent  had  not  a  sufficient  legal  interest  to  sue 
for  its  infringement. 

It  has  been  held  that  one  co-owner  of  a  patent  may  sue 
alone  for  the  recovery  of  profits  due  for  the  use  of  the  patent 
without  making  his  co-owners  parties.   (Shn-hun  \.  < 
('».,  16  Ch.  D.  59.)     (See,  however,  Van  (i<ll  r  c(r.  Co.  v. 
Smcerby,  1  R.  P.  C.  41.) 

The  assignee  of  a  share  of  the  profits  of  the  patent  is 
entitled  to  call  on  a  licensee  of  the  patentee  for  an  account, 
but  the  assignee  suing  must  make  the  assignor  and  the 
assignees  of  other  shares  of  the  profits  parties  to  the  suit, 
and  must  offer  to  pay  any  moneys  due  from  the  assignor  to 
the  accounting  licensee.  (Bergman n  \\Macmillan,  L.  l:.  17 
Ch.  D.  427.) 

The  assignee  of  the  original  assignee  takes  subject  to 
his  covenants  if  he  has  notice  of  them,  (ll'cnl  nn<m  \. 
Soci  ralf  (V  M.-ctrint,',  L.  R.  19  Ch.  D.  247.) 

Where  a  patent  is  assigned  to  two  persons  and  on* 
the  survivor  may  sue  for  an  infringement  committed  during 
the  lifetime  of  the  other.  (Smith  \.  L»n<L>n  ami  X»rth- 
Wcstern  llailicay  Company,  2  E.  &  B.  69).  In  the  event  of 
a  patentee's  bankruptcy,  the  patent  becomes  vested  in  the 
trustee,  who  may  sue  for  infringements  committed  before 
the  bankruptcy.  \Ifcsse  v.  Strrrnson,  8  Bos.  &  P.  577; 
Moram  v.  Efat,  9  Dowl.  &  R.  215  ;  #.  C.  6  B.  <t  C.  169.) 

"Where  a  partnership  at  will  was  formed  for  the  purpose 
of  working  an  invention  for  which  a  patent  had  been  pre- 
viously obtained  and  registered  in  the  name  of  one  of  the 


LICENCES  219 

partners  alone,  it  was  held  that  the  patent  became  an  asset 
of  the  partnership,  and  each  partner  acquired  a  right  to 
work  the  invention.  Also  that  this  right  was  not  taken 
away  by  the  registered  owner  assigning  the  patent  to  a 
third  party  who  had  notice  of  the  existence  of  the  partnership. 
(Kenny* 's  Button-holing  Company  v.  Someii'ille,  37  L.  J.  Rep. 
N.  s.  878). 

It  is  not  contrary  to  public  policy  for  a  patentee,  on 
the  assignment  of  his  patent,  to  contract  to  assign  to  the 
purchaser  all  future  patents  which  the  vendor  may  obtain 
having  relation  to  the  invention  already  patented  or  being 
of  similar  nature.  (Printing  and  Numerical  Registering  Com- 
pany v.  Sampson,  L.  R.  19  Eq.  462.) 

A  body  corporate  may  take  an  assignment  of  a  patent, 
and  be  registered  as  the  proprietor  thereof  in  its  corporate 
name.  (See  Rule  73  of  the  Patents  Rules  1890.) 

A  patentee,  after  assigning  all  his  interest  in  a  patent 
for  a  valuable  consideration  will  not  be  allowed  in  an  action 
against  himself  for  an  infringement  to  raise  the  question 
whether  the  patent  is  void  for  want  of  novelty  (Walton  v. 
Lavater,  8  C.  B.  N.  s.  162,  187  ;  and  see  also  Chambers  v. 
Cricliley,  33  Bea.  374),  unless  the  patent  has  been  made 
invalid  by  the  assignee's  disclaimer.  (Hocking  v.  Hocking,  4 
R.  P.  C.  434.) 

But  a  patentee  whose  patent  has  been  assigned  by  the 
trustee  under  his  bankruptcy  is  not  estopped  in  an  action 
brought  by  the  assignee  against  the  patentee  for  an  in- 
fringement from  showing  that  the  patent  is  bad  for  want 
of  novelty  in  the  invention.  (Cropper  v.  Smith,  1  R.  P.  C. 
•92;  and  see  Goucher  v.  Clayton,  11  Jur.  N.  s.  107.) 


LICENCES. 


Licences  have  various  intents.  In  their  most  general 
form  they  are  nearly  tantamount  to  an  assignment  of  the 
patentee's  whole  rights.  But  usually  they  are  for  a  term 
shorter  than  that  mentioned  in  the  patent,  and  sometimes 
they  do  not  extend  to  the  whole  of  the  invention.  A 
licence  may  be  restricted,  likewise,  to  a  particular  district. 


J.I, 

t  is  called  an  «•/•«•/»•  is  one  by  which  the 

patentee  binds  himself  not  to  empower  any  other  person  to 
exercise  tin-  put* nt  privilege,  i-ither  at  nil  or  within  a  ;. 
di-irict. 

A  lie-once  to  A.  t»  nmnufucture  a  paU'iit  article  is  an 
iiuthority  to  his  vendt « -s  to  \vn«l  it  without  the  consent  of 
the  patentee.  (Thomas  v.  Hunt,  17  C.  B.  N.  s.  188). 

The  consideration  for  the  grant  uf  a  licence  is  usually 
mi  immediate  money  payment  or  a  periodical  payu 
which  may  In-  ritln-r  of  a  certain  amount  or  <1«  ]><  n<l«  nt 
upon  the  extent  tit  which  the  licensee  uses  the  invention. 
In  the  last  case  care  should  be  taken  not  to  create  a 
partnership  when  no  partnership  is  contemplated.  See 
IM.m-.in  v.  1'inlip  (I  Cr.  M.  A  K.  11. M;  /•;/./ «Y  v.  II 

(6  M.  A  \v.  :,i8). 

In  preparing  licences  the  following  points  should  be 
attended  to : — The  patentee  ought  to  enter  into  the  usual 
qualified  covenants  that  the  patent  is  valid,  and  that  he 
has  a  right  to  grant  the  licence.  The  licensee  should 
covenant  to  pay  any  sums  the  payment  of  which  is  post- 
poned to  a  future  time.  Where  the  payments  are  to  vary 
with  the  extent  to  which  the  licensee  shall  use  the  inven- 
tion, there  ought  to  be  covenants,  on  the  part  of  the 
licensee,  to  render  properly  verified  accounts,  and  to  allow 
periodical  inspections  of  books,  machinery,  stock,  &c.  If 
it  be  intended  that  the  licensee  should  not  be  permitted  to 
question  the  validity  of  the  patent  or  the  sufficiency  of  the 
specification,  recitals  should  be  introduced  affirming  these 
points,  or  express  covenants  debarring  the  licensee  from 
raising  the  question.  But  recitals  can  only  affirm  the  facts 
as  they  stood  at  the  time  of  the  execution  of  the  deed : 
covenants  may  be  made  to  apply  to  all  future  time. 
Recitals,  however,  will  have  the  effect  of  estopping  the 
parties  from  disputing  the  facts  recited.  (Bowman  v. 
Taylor,  2  Ad.  &  El.  278  ;  Hill*  \.  Lamiwj,  9  Exch.  256.) 
In  the  absence  of  such  recitals  or  covenants,  a  licensee, 
when  sued  for  money  reserved  by  the  licence,  may,  where 
ihe  contract  is  executory,  or  where  there  is  the  taint  of 


LICENCES  221 

fraud,  set  up,  as  a  defence,  that  the  patent  is  void.  (Hayne 
v.  Maltby,  3  T.  E.  438 ;  and  see  Piddiny  v.  Franks,  1  Mac. 
and  Gord.  56.)  On  the  other  hand,  refer  to  the  case  of 
Laivcs  v.  Purser,  6  Ell.  and  Bl.  930.  This  was  an  action 
brought  by  a  patentee  upon  an  agreement  whereby  the 
defendant  contracted  to  pay  a  certain  sum  per  ton  of  an 
article  manufactured  and  sold  by  him,  by  permission  of  the 
plaintiff  to  him  given  at  his  request,  the  sole  manufacture 
and  sale  of  such  article  being  the  subject  of  the  plaintiff's 
letters  patent.  The  invention  having  been  used  by  the  de- 
fendant, he  refused  to  pay  the  stipulated  sum,  pleading  that 
the  letters  patent  were  void,  and  that  he  had  a  right  to 
make  and  sell  the  article  without  licence.  It  was  held  that 
the  defendant  was  not  entitled  to  set  up  such  a  defence,  the 
contract  having  been  executed,  and  no  fraud  being  alleged. 
But  one  of  the  judges  thought  that  if  the  defendant  had1 
given  notice  that  he  disputed  the  validity  of  the  patent, 
and  would  in  future  use  the  invention  in  his  own  right,, 
such  notice  would  change  the  position  of  the  parties :  for 
after  it  the  patentee  might  sue  the  defendant  for  an  in- 
fringement of  his  patent  for  any  subsequent  user;  and1 
perhaps,  in  an  action  on  the  agreement  for  the  price  of 
such  subsequent  user,  the  invalidity  of  the  patent  might  be 
a  defence. 

Although  the  licence  deed  may  contain  no  express 
power  of  revocation  the  licensor  is  entitled  to  treat  the 
licence  as  forfeited  and  to  determine  it,  if  its  terms  and 
conditions  have  been  broken.  A  simple  notice  in  writing- 
is  sufficient  for  the  purpose,  an  instrument  under  seal  not 
being  necessary.  (Ward  v.  Livcsey,  5  E.  P.  C.  102).  But  it 
will  be  prudent  to  insert  a  clause  giving  the  patentee  power 
to  render  the  licence  void,  in  case  of  non-payment  of 
royalties  or  other  sums  reserved,  or  on  non-performance  of 
any  of  the  covenants.  Power  is  sometimes  reserved  to 
place  the.  royalties  in  the  hands  of  a  stakeholder  during 
litigation  affecting  the  patent. 

It  seems  that  a  licence  is  not  assignable  to  a  third 
person  in  the  absence  of  an  express  or  implied  power  to* 


LICENCES 

assign,  such  as  u  licence  is  granted  to  th>    lj.-*>nsee, 

his  executors,  administrators,  or  assigns.  (Bower  v.  Hodgfi, 

-i-i  i..  .1.  ( .  r.  r 

;•«•  is  no  decision  as  to  the  power  of  one  grantee  to 
grant  a  valid  liivm-e  without  the  consent  of  his  co-grantees, 
but  it  would  probably  be  held  that  he  cannot. 

is  held  by  L<>nl  liomUIn,  M.  /,'.,  in  M<itli> 
r.r.i\ .  17(»,  that  when  one  of  three  joint  patentees  had 
grant,  d  liivnci  s,  he  \\a-  'hound  to  account  to  his  co-patentees 
for  the  royalties  i 

As  licensees  sometimes  exercisr  their  ri-ht  of  making 
or  dealing  in  articles  ••jnxdi-m  </'•'""*,  but  outside  the 
patent  under  which  they  are  licensed,  it  may  be  well  to 
consider  in  some  cases  whether  a  covenant  should  be  intro- 
duced restraining  them  from  so  doing.  It  i->  frequently 
stipulated  that  articles  made  by  a  licensee  shall  be  marked 
in  such  a  way  as  to  show  that  they  \v,  M  made  under  the 
patent. 

In  the  case  of  on  exclusive  licence  it  is  desirable  that 
the  licensee  should  covenant  to  pay  a  certain  minimum 
sum  at  stated  periods  in  the  shape  of  royalty  ;  and  in  some 
cases  to  insert  covenants  on  the  part  of  the  patentee  to 
proceed  against  persons  infringing  the  patent  (see  II- 
son  v.  M' mt fin t  L.  R.  8  C.  P.  202),  or  to  permit  the  licensee 
to  proceed  in  the  patentee's  name. 

When  a  sum  of  money  has  been  paid  for  a  licence,  and 
the  consideration  fails,  the  money  may  be  recovered.  Thus 
in  Kmndfs  v.  Bovill  (22  L.  T.  x.  s.  70),  it  appeared  that  a 
patentee  had  granted  to  the  plaintiff  a  licence  to  use  his 
patent,  and  had  agreed  to  apply  for  a  prolongation  of  the 
patent  of  which  the  plaintiff  was  to  have  the  benefit ;  and 
he  further  agreed  to  grant  a  licence  under  a  new  patent, 
for  which  he  had  applied.  The  patentee,  however,  died 
shortly  afterwards  without  having  done  anything.  It  was 
held  that  the  plaintiff  could  recover  the  money  paid  from 
the  patentee's  executors. 

In  Cluinti-r  v.  Isw  (4  M.  it  W.  295,  affirmed  on  appeal, 
5  M.  A:  W.  698),  there  was  a  licence  not  under  seal  to  use 


LICENCES  223 

six  patents,  one  of  which  was  found  to  be  invalid ;  it  was 
held  that  there  was  a  failure  of  consideration,  as  there  was 
no  proof  that  the  licensee  had  used  the  five  good  patents 
and  there  was  no  apportionment  of  the  annual  payments. 

On  the  other  hand,  it  has  been  decided  that  annual 
sums  paid  in  consideration  of  a  licence  cannot  be  recovered 
I)y  action  when  the  patent  turns  out  to  be  void  (Taylor  v. 
Hare,  1  Bos.  and  Pul.  N.  E.  260)  ;  except  where  fraud  is 
proved.  (Lovcll  v.  Hicks,  2  Y.  and  C.  472).  To  meet  this 
case  it  will  be  prudent  to  have  a  covenant  in  the  licence, 
under  which  the  parties  may  readjust  their  accounts  in  the 
event  of  the  patent  proving  void  or  voidable. 

A  licensee  during  the  continuance  of  the  licence  cannot 
set  up  as  a  defence  to  an  action  for  the  royalty  that  the 
invention  was  not  new  or  not  useful,  or  that  the  patentee 
was  not  the  first  inventor,  or  that  the  specification  is  insuf- 
ficient. (Noton  v.  Brooks,  7  H.  &  N.  499  ;  Trotman  v.  Wood, 
16  C.  B.  N.  s.  479 ;  Smith  v.  Scott,  5  Jur.  N.  s.  1356  ;  Cha- 
vasse  v.  Stevens,  W.  N.  1874,  p.  193 ;  Adie  v.  Clark,  L.  E. 
2  App.  Gas.  423  ;  Liardet  v.  Electric  Lighting  Co.,  W.  N. 
1883,  p.  96.)  But  when  in  such  a  case  the  claim  in  the 
specification  is  susceptible  of  two  constructions,  one  of 
which  would  make  the  specification  bad,  and  the  other  and 
more  natural  one  would  make  it  good,  it  was  held  that  the 
licensee  may  insist  that  the  latter  is  the  true  construction. 
(Trotman  v.  Wood,  16  C.  B.  N.  s.  479).  But  now  see  Adic 
-v.  Clark  cited  above.  Even  where  no  formal  licence  has 
been  executed,  a  person  \vho  has  paid  money  in  the  nature 
of  a  royalty  will  not  be  allowed  to  dispute  the  validity  of 
the  patent.  (Crossley  v.  Dixon,  10  H.  L.  C.  293.)  Further- 
more, a  licensee  will  not  be  permitted  to  use  the  invention 
-without  payment  of  the  royalties  he  has  covenanted  to 
pay,  even  after  the  patent  has  been  found  invalid  in  pro- 
ceedings between  other  parties.  (The  Grover  &  Baker  Sewing 
Machine  Company  v.  Millard,  8  Jur.  N.  s.  713.) 

The  plaintiff  held  an  exclusive  licence  from  the  patentee 
of  a  machine  to  use  the  invention  within  a  certain  district 
for  four  years,  and  the  licence  was  registered  at  the  Patent 


I'l'  I  I.iri-SCES 

Office.     After  tlio  date  of  the  lie.  n<-e  and  before  the  tim.- 
«-\pir.  d    tin-  ili  ft ndimts    brought   into   the  di 
machines  which  they  had  purchased  from  persons  who  had 
bought  them  from  the  patentee  outside  the  district.     It 
was  held  that  as  there  was  no  proof  that  tin-  <1. f.  n  ; 
hail  notice  of  tin-  lift  ncr  they  were  not  liable  in  an  a 
to  restrain  the  use  of   the  machines  within  the  district. 
.//..i/.  v.  Hi,'!.,,.  ;,    !;.    1».  C.  60:t  .  on  appeal.  •;  II. 

P.  C.  41W.) 

A  licensee  has,  however,  a  right  to  have  it  ascertained 
\\  hat  is  the  field  covered  by  the  specification  as  properly 
construed,  and  is  entitled  to  say  that  he  has  not  gone  in-id' 
that  field.  He  may  seek  to  havi  th.  boundary  of  the 
patentee's  invention  defined  with  the  view  of  showing  that 
he  had  not  rendered  himself  liable  to  make  the  payments 
stipulated  in  the  licence.  (.!<//<•  v.  Clark,  L.  R.  4  App.  Cas. 
423;  Cimchman  v.  Greener,  House  of  Lords,  1  R.  P.  <  .  I'.'T  : 
Useful  r<it,-nt8  Co.  v.  Ilylands,  2  R.  P.  C.  255  ;  Crtnthiniit,- 
v.  Steelc,  6  R.  P.  C.  190.)  And  after  a  licence  has  been 
determined,  a  licensee  is  at  liberty  to  dispute  the  vulidity 
of  a  patent  in  a  suit  for  an  injunction  to  restrain  an  infringe- 
ment. (Ihui'iirtllil  v.  J<>m-*,  18  L.  T.  N.  s.  142;  Axmann 
v.  i., mil,  L.  R.  18  Ch.D.880;  and  see  AV//KM/I  v.  F<>th,-njHl, 
1  W.  P.  C.  290). 

In  an  action  for  infringement  the  defendant,  being  the 
mortgagee  of  certain  articles  made  under  a  licence  which 
the  plaintiff  alleged  had  been  revoked,  disputed  the  fact  of 
revocation,  and  at  the  same  time  contended  that  the  patent 
was  invalid.  It  was  held  that  he  must  elect  which  of  these 
lines  of  defence  he  would  take.  (Post  Card  A  utomatic  Sn]>]il>f 
Co.  v.  Samuel,  6  R.  P.  C.  560). 

A  licence  was  granted  during  the  period  of  provisional 
protection.  The  scope  of  the  invention  was  afterwards 
considerably  limited.  The  licensees  contended  that  the 
licence  was  void,  but  it  was  held  upon  the  particular  words 
of  the  licence  that  the  licensees  were  bound  by  the  deed. 
(Otto  v.  Singer,  7  R.  P.  C.  7.) 

An  exclusive  licensee  has  no  right  to  bring  an  action- 


LICENCES  225 

for  an  infringement  in  his  own  name  without  joining  the 
patentee.  (Heap  v.  Hartley,  5  E.  P.  C.  602  ;  S.  C.  on  appeal, 
6  E.  P.  C.  496.)  An  ordinary  licensee  has  no  right 
to  apply  in  the  name  of  the  owner  for  an  injunction  to 
restrain  infringements  (Newby  v.  Harrison,  1  J.  &  H.  393) , 
nor  has  the  agent  of  the  patentee.  (Adams  v.  North  British 
Railway  Company,  W.  N.  1873,  p.  191.) 

A  patentee  will  not  be  allowed  to  publish  advertisements 
and  circulars  calculated  to  deter  the  public  from  dealing 
with  his  licensee.  (Clark  v.  Adie,  21  W.  E.  764.) 

The  following  cases  relate  to  licences  connected  with 
partnerships  :  Chambers  v.  Crichley  (33  Bea.  374) ;  Axmann 
v.  Lund  (L.  E.  18  Eq.  330) ;  Heugh  v.  Chamberlain  (25  W. 
E.  742). 

Formerly  when  the  patent  was  silent  as  to  the  form  of 
licence,  a  simple  licence,  without  covenants,  need  not  have 
been  under  seal  (Chanter  v.  Deu-hurst,  12  M.  &  W.  823 ; 
Reuss  v.  Lever,  Ch.  Div.  April  9,  1879 ;  V.  C.  Hall) ;  nor,  it 
seems,  if  it  was  not  a  deed,  did  it  require  a  stamp.  (Chanter 
v.  Johnson,  14  M.  &  W.  408.)  But  now  the  form  of  patent 
set  forth  in  the  first  schedule  of  the  Act  of  1883  requires 
licences  to  be  in  writing  under  the  hand  and  seal  of  the 
patentee.  A  stamp  of  10s.  must  be  impressed  in  ordinary 
cases,  and  an  ad  valorem  stamp  on  the  consideration-money 
when  a  fixed  sum  is  paid.  When  a  licence  contains 
a  covenant  for  the  payment  of  a  minimum  royalty,  the 
Stamp  Office  insists  upon  payment  of  an  ad  valorem  duty 
upon  the  gross  minimum  royalty  reserved,  and  this 
although  the  licence  contains  power  for  licensor  or  licensee 
to  determine  the  licence. 

Compulsory  Licences. — The  twenty-second  section  of  the 
Patents  Act  of  1883  introduced  an  entirely  new  regulation 
as  to  licences  by  empowering  the  Board  of  Trade  to  order 
a  patentee  to  grant  licences  to  persons  petitioning  the 
Bbard. 

'  If  on  the  petition  of  any  person  interested  it  is  proved 
to  the  Board  of  Trade  that,  by  reason  of  the  default  of  a 
patentee  to  grant  licences  on  reasonable  terms,  (a)  the 

Q 


1'L'ii  LICENCES 

patent  is  not  being  worked  in  the  I'nit.  d  Kingdom;  or 
the  reasonable  requirements  of  the  public  \\ith  respect  to 
tli«  iiiv. •iitiiui  cannot  be  supplied;  or  (r)  any  person  is  pre- 
vented fn>ni  \\oi-kinxr  or  using  to  the  best  advantage  an  in- 
vention of  which  he  is  possessed,  the  Board  may  order  the 
patentee  to  grant  licences  on  such  terms  as  to  amount  of 
royalties,  security  for  payment,  or  otherwise,  as  the  Board, 
having  regard  to  the  nature  of  the  invention  and  the  cir- 
cumstances of  the  case,  may  deem  just,  and  any  siu  h  < 
may  be  enforced  by  mandamus,'  which  will  require  an 
application  to  the  High  Court  of  •' 

Patents  granted  before  the  commencement  of  tip 
or  on  applications  then  pending,   are  excepted  from  the 
operation  of  this  provision.     (Sect.  45.) 

As  to  the  procedure  on  petitions  for  compulsory  licences 
see  Rules  60-66  of  the  Patents  P.ules  1890. 

As  to  the  persons  representing  the  Board  of  Trade  in  all 
matters  authorised  to  be  done  by  the  Board  under  tin- 
Patents  Act  of  1883,  and  as  to  the  documents  and  certificates 
issued  by  the  Board,  see  the  25th  sect,  of  the  Act  of  1888, 
or  sect.  102A  of  the  Act  of  1883. 

The  orders  of  the  Board  in  relation  to  this  difficult  and 
delicate  matter  seem  to  be  absolute  and  final,  no  appeal 
from  their  decision  being  given  by  the  Act ;  nor  is  any  power 
to  award  costs  given  to  the  Board.  From  the  wording  of 
the  section  it  is  clear  that  the  three  grounds  for  application 
are  independent  of  each  other,  any  one  if  properly  proved 
being  sufficient  to  authorise  the  Board  to  make  an  ord< 
a  defaulting  patentee.  To  rebut  the  charge  that  a  patent 
is  not  being  worked  in  the  United  Kingdom  the  patentee, 
whether  British  or  foreign,  would  probably  be  required  to 
show  that  any  manufacture  established  in  this  country  was 
of  a  real  and  substantial  nature  carried  on  bonn  fulc  under 
the  same  conditions  and  to  the  same  extent  as  a  licensee, 
not  exclusive,  would  carry  it  on  under  a  reasonable  royalty. 

Up  to  the  time  of  the  publication  of  this  book  very  few 
petitions  have  been  presented  to  the  Board  of  Trade  for 
compulsory  licences,  and  not  a  single  order  has  been  made 


LICENCES  227 

under  the  powers  given  to  it.  This  section  of  the  Act, 
though  apparently  a  dead  letter,  may  yet  have  had  a  certain 
indirect  effect,  by  inducing  patentees  to  come  to  terms 
privately  with  persons  who  desire  to  take  licences,  when 
otherwise  they  might  have  refused  to  do  so.  And  in  some 
cases  foreigners  who  have  obtained  British  patents  for  their 
inventions  may  possibly  have  been  prompted  to  establish 
manufactories  in  this  country  instead  of  manufacturing  the 
goods  abroad  and  importing  them. 

In  case  a  patentee  should  have  made  a  bond-fide  grant 
of  an  exclusive  licence,  it  may  be  doubted  whether  he  would 
be  ordered  by  the  Board  to  grant  other  licences,  and  still 
more  whether  such  an  order,  if  made,  would  be  enforced  by 
mandamus  in  a  court  of  law. 


c  2 


_'Js  i  HE  REGISTRATION   OK  PATENTS 


(  1 1  AFTER    XVI. 

THE  REGISTRATION  OP  PATENTS,  ETC. 

THE  twenty-third  section  of  the  Patents  Act  of  1888  directs 
that  there  shall  be  kept  at  the  Patent  Office  a  book  called 
the  Register  of  Patents,  wherein  shall  be  entered  the  names 
and  addresses  of  grantees  of  patents,  notifications  of  assign- 
ments and  of  transmissions  of  patents,  of  licences  un<l.  r 
patents,  and  of  amendments,  extensions,  and  revocations  of 
patents,  and  such  other  matters  affecting  the  validity  or 
proprietorship  of  patents  as  may  from  time  to  time  be  pre- 
scribed. The  Register  of  Patents  will  bo  jtrunn-fudc  evidence 
of  any  matters  by  the  Act  directed  or  authorised  to  be 
inserted  therein.  Copies  of  deeds,  licences,  and  any  oth»  r 
documents  affecting  the  proprietorship  in  any  letters  patent 
or  in  any  licence  thereunder  must  be  supplied  to  the 
Comptroller  in  the  prescribed  manner  for  filing  in  the 
Patent  Office. 

By  the  eighty- seventh  section  of  the  Act,  where  a  person 
becomes  entitled  by  assignment,  transmission,  or  other 
operation  of  law  to  a  patent,  the  Comptroller  shall  on 
request,  and  on  proof  of  title  to  his  satisfaction,  cause  tin- 
name  of  such  person  to  be  entered,  as  proprietor  of  the 
patent,  in  the  Register  of  Patents.  The  person  for  the  time 
being  entered  in  the  Register  of  Patents  as  proprietor  of  a 
patent  shall,  subject  to  the  provisions  of  the  Act  and  to  any 
rights  appearing  from  such  register  to  be  vested  in  any  other 
person,  have  power  absolutely  to  assign,  grant  licences  as 
to,  or  otherwise  deal  with,  the  same,  and  to  give  effectual 
receipts  for  any  consideration  for  such  assignment,  licence, 
or  dealing.  Any  equities  in  respect  of  such  patent  may  be 


THE  REGISTRATION  OF  PATENTS  229 

enforced  in  like  manner  as  in  respect  of  any  other  personal 
property. 

Notices  of  trusts,  expressed,  implied,  or  constructive,  are 
not  to  be  entered  in  the  register  nor  to  be  received  by  the 
Comptroller.  (Sect.  85.) 

The  probate  of  a  patentee's  will  or  the  letters  of 
administration  must  be  registered,  in  order  that  when  the 
executor,  administrator,  or  legatee  comes  to  deal  with  the 
patent  the  chain  of  title  may  be  complete. 

The  procedure  as  to  the  registration  of  patent  documents 
is  set  forth  in  Eules  67-77  of  the  Patents  Eules  1890.  A 
fee  of  ten  shillings  is  payable  for  each  entry  on  the  register. 
The  Patent  Office  refuses  to  register  any  document  until 
the  patent  affected  has  been  sealed.  Deeds  left  for  registra- 
tion must  be  duly  stamped. 

The  Court  may  (sect.  90),  on  the  application  of  any 
person  aggrieved  by  the  omission  without  sufficient  cause 
of  the  name  of  any  person  (or  of  any  other  particulars,  sect. 
23  of  Act  of  1888)  from  the  register  or  by  any  entry  made 
without  sufficient  cause  in  such  register,  make  such  order 
for  making,  expunging,  or  varying  the  entry  as  the  Court 
thinks  fit ;  or  the  Court  may  refuse  the  application :  and 
in  either  case  may  make  such  order  with  respect  to  the 
costs  of  the  proceedings  as  the  Court  thinks  fit.  Further, 
the  Court  may  in  any  proceeding  under  this  section  decide 
any  question  that  it  may  be  necessary  or  expedient  to  decide 
for  the  rectification  of  a  register,  and  may  direct  an  issue 
to  be  tried  for  the  decision  of  any  question  of  fact,  and  may 
award  damages  to  the  party  aggrieved.  Any  order  of  the 
Court  rectifying  a  register  must  direct  that  due  notice  of 
the  rectification  be  given  to  the  Comptroller;  and  Kule 
74  of  the  Patents  Rules  1890  requires  an  office  copy  of  the 
order  to  be  left  at  the  Patent  Office. 

In  Re  ParndVs  Patent,  5  E.  P.  C.  130,  Mr.  Justice  North 
said  he  saw  that  there  may  be  documents  which  can  be 
properly  entered  on  the  register  although  dated  before  the 
date  of  a  patent,  but  in  many  instances  the  objections 


230  THE  REGISTRATION  OP  PATENTS 

against  the  registration  of  such  pro-dated  documents  would 
be  insuperable. 

It  would  seem  that  under  the  Judicature  Acts  there 
lies  an  appoal  from  any  order  made  by  a  judp«-  im.!.  r 
section  90  of  the  Act  of  1888.  (Morgan' t  I'nt.nt,  -J  I  \Y.  I:. 
245.) 

If  any  rectification  of  a  register  is  require.!  in  pursuance 
of  any  proceeding  in  a  Court  in  Scotland  or  Ireland,  a 
copy  of  the  order,  decree,  or  other  authority  for  the  rectifi- 
cation must  be  served  on  the  Comptroller,  and  he  is  to 
rectify  the  register  accordingly.  (Sect.  111.) 

The  Comptroller  is  empowered  (sect.  91)  to  correct  any 
clerical  error  in  the  name,  style,  or  address  of  the  registered 
proprietor  of  a  patent. 

The  making  of  false  entries  in  the  register ;  the  making 
of  any  writing  falsely  purporting  to  be  a  copy  of  an  entry 
therein  ;  and  the  tendering  in  evidence  of  any  such  writing, 
are  declared  to  be  severally  misdemeanours.  (Sect.  98.) 

The  former  registers  of  patents  and  of  proprietors  are 
to  be  deemed  parts  of  the  register  of  patents  kept  under  the 
new  Act  (sect.  114),  which  is  directed  to  be  open  at  all  con- 
venient times  to  the  inspection  of  the  public,  subject  to  such 
regulations  as  may  be  prescribed.  (See  Rule  79.) 

Certified  copies,  sealed  with  the  seal  of  the  Patent  Office, 
of  any  entry  in  such  register  will  be  given  to  any  person 
requiring  the  same  on  payment  of  the  prescribed  fee.  (Sect. 
88,  and  see  Rule  79.) 

The  thirty-fifth  section  of  the  Patents  Act  of  1852  pro- 
vided that  until  registration  of  an  assignment  the  grantee 
of  the  patent  should  be  deemed  the  proprietor  of  the  exclu- 
sive privileges  thereby  granted  ;  and  it  was  held  in  Ch<>ll't 
v.  Hn/mann  (1  E.  and  B.  636)  that  an  assignee  could  not 
bring  an  action  for  an  infringement  against  third  parties 
until  his  assignment  had  been  registered.  But  in  the  case 
of  Hagsall  v.  Wriylit  (L.  R.  10  Eq.  509),  Sir  11.  Mating, 
V.  C.,  was  of  opinion  that  an  assignee  of  a  patent  might 
maintain  a  suit  against  the  assignor  and  subsequent 
licensees  of  the  assignor  with  notice  of  the  assignment  to 


THE  REGISTRATION   OF  PATENTS  231 

restrain  them  from  using  the  patent,  although  at  the  time 
of  the  institution  of  the  suit  the  assignment  had  not  been 
registered.  And  from  the  same  case  it  seems  that  the 
judge  thought  that  registration  related  back  to  the  date  of 
the  assignment,  so  as  to  enable  the  assignee  to  maintain  a 
suit  to  restrain  infringement  instituted  between  the  dates 
of  the  assignment  and  registration.  No  case  bearing  upon 
this  point  has  been  reported  since  the  Act  of  1883  came 
into  operation.  When  the  executors  of  a  patentee  ob- 
tained probate  of  their  testator's  will  and  assigned  his 
patent,  but  the  probate  was  not  registered  till  after  the 
assignment,  it  was  held  that  the  assignment  was  valid. 
(Ellwoodv.  Christy,  10  Jur.  N.  s.  1079  ;  S.  C.  11  L.  T.  N.  s. 
342.) 

Under  the  thirty- eighth  section  of  the  Patents  Act  of 
1852,  which  gave  power  to  the  Courts  to  expunge  entries 
in  the  register  of  patents  similar  to  that  conferred  by  the 
ninetieth  section  of  the  new  Act,  the  Master  of  the  Eolls 
ordered  the  registry  of  a  second  assignment  of  a  patent  to 
be  expunged  on  the  application  of  the  assignees  under  a 
prior  assignment,  which  had  not  been  registered  until  after 
the  second,  as  it  appeared  that  the  second  assignment  had 
been  executed  for  a  fraudulent  and  improper  purpose.  (Re 
Green's  Patent,  24  Bea.  145.)  In  another  case,  the  Master 
of  the  Eolls  said  that  if  there  were  two  deeds  assigning  the 
patent  simpliciter  to  two  different  persons,  and  the  second 
was  registered  before  the  first,  and  if  it  were  clearly  proved 
that  the  second  deed  was  executed  with  full  and  complete 
notice  of  the  prior  one,  though  subsequently  registered, 
he  conceived  he  should  have  power  to  direct  an  entry  to  be 
made  upon  the  register,  stating  the  facts.  In  Re  Morcy's 
Patent  (25  Bea.  58),  it  was  said  to  be  the  duty  of  the  Court 
to  insert  on  the  register  any  facts  relating  to  the  proprie- 
torship, but  not  the  legal  inferences  to  be  drawn  from  them. 
One  of  two  joint  patentees  assigned  by  deed  his  interest  in 
the  patent  to  a  third  person,  and  released  him  from  all 
claims  on  the  part  of  both  patentees.  At  the  instance  of 
the  other  patentee  the  Master  of  the  Eolls  ordered  the 


THE  REGISTRATION  OP  PATENTS 

tit  try  of  the  assignment  to  be  expunged.     (lie  J  Ionic;/ 
Kni.ihtnn'g  /-..•    '.  i..  i;.  s  i;,,.  t: 

In  the  matter  of  the  same  paten:  I.  1:.  I  <'h.  784)  it 
was  decided  that  there  was  no  appeal  from  such  an  order 
of  the  Master  of  the  Rolls.  But  the  jurisdiction  having 
now  been  transferred  to  the  Hi^h  Court  of  Justice 

:>in'x  Pat.  nt,  li  l  \\ .  I;.  •_!  ifi),  it  would  seem  to  be  subject 
to  appeal. 

In  SpecMart  v.  CampMl  ('Times,'  March  18,  1884),  it 
was  held  by  the  Court  of  Appeal  that  a  person  (who  in  this 
case  was  a  for  may  l>ring  an  action  in  his  own  name 

for  an  infringement  when  the  patent  is  registered  in  the 
name  of  another  person,  if  that  other  person  is  a  trustee 
for  the  plaintiff. 

Registration  of  an  exclusive  licence  for  a  district  is  not 
in  itself  notice  to  the  world.     >//"//'  v.  Hartley,  5  R.  P.  C. 
•603.) 


INFRINGEMENTS  233 


CHAPTEE  XVII. 

INFKINGEMENTS. 

THIS  chapter  will  be  devoted  to  a  discussion  of  the  sub- 
stantive law  and  the  reported  cases ;  and  the  next  will 
treat  shortly  of  the  practice  connected  with  the  proceedings 
for  infringements  in  the  High  Court  of  Justice. 

The  rights  of  a  patentee  may  be  violated  in  several 
ways.  1.  The  invention  may  be  overtly  exercised  exactly 
as  the  specification  has  described  it  without  the  permission 
of  the  patentee.  2.  The  invention  may  be  copied  not 
textually  and  literally,  but  with  certain  changes  and  varia- 
tions, such  as  additions,  omissions,  transpositions,  or  sub- 
stitutions of  parts,  so  as  to  produce  something  colourably 
different  from  the  original.  3.  By  dealing  in  articles  made 
by  the  patented  method  without  the  licence,  express  or 
implied,  of  the  patentee.  4.  By  the  user  of  articles  made 
by  an  infringement  of  the  patent. 

As  to  the  first  mode  of  infringing  a  patent,  nothing 
more  need  be  said  at  present,  because,  when  the  fact  is 
capable  of  proof,  the  remedy  can  be  readily  applied.  It  is 
the  second  method  of  encroaching  on  his  rights  that  gives 
most  trouble  to  the  patentee.  Certain  devices  (mechanical 
equivalents,  transpositions  of  parts,  &c.)  having  been  em- 
ployed to  give  a  different  appearance  to  the  copy,  with  the 
design  of  seeming  not  to  trespass  within  the  pale  set  up  by 
the  patentee,  and  with  the  view  of  causing  that  copy  to  be 
mistaken  for  a  distinct  thing,  it  becomes  the  patentee's 
task  to  expose  the  scheme  and  to  show  that  the  pretended 
novelty  is  in  truth  an  infringement  in  disguise.  The  lead- 


*J3  I 

ing  idea,  or  principle,  as  it  ia  usually  termed,  remaining 
the  same,  the  contrivances  will  be  considered  identical, 
and  when  that  is  capable  of  satisfactory  proof,  t 
tinnance  of  the  infringement  maybe  stopped  by  application 
to  a  court  of  law,  and  the  infringer  may  be  compelled  to 
make  compensation  for  the  injury  he  has  committed. 
Further,  a  machine  may  display  ingenuity  in  its  construc- 
tion and  may  have  been  the  work  of  an  honest  and  inde- 
pendent inventor,  yet  if  there  is  a  previous  patent  for  what 
is  substantially  the  same  thing  it  must  be  deemed  an  in- 
fringement. 

A  person  will  not  be  allowed  to  deprive  an  imvntor  of 
the  fruits  of  his  discovery  by  substituting  a  well-known 
equivalent,  either  chemical  or  mechanical,  for  some  part 
of  the  patented  invention.  Where  the  question  arises  as 
to  the  infringement  of  the  patent  for  a  machine,  the  sub- 
stance and  not  merely  the  form  of  the  invention  will  be 
looked  at  in  a  court  of  justice.  Therefore,  when  it  is  shown 
that  two  machines  are  alike  in  principle,  and  that  the  con- 
structor of  the  second  machine  has  carried  the  {irinrinle  of 
the  first  into  effect  by  substituting  one  mechanical  equivalent 
for  another,  here  it  will  be  held  that  there  has  been  an 
infringement.  (See  Morgan  v.  Si'icanl,  I  W.  P.  C.  171  ; 
Tlmrn  \.  }\'<>rtliii,:i  Sl;titiii;i  li'ink  ( '"injHint/,  L.  R.  6  Ch.  I> 
•11.-.  n.  :  A.lair  v.  YI,HH<I,  L.  R.  12  Ch.  81. 

'It  will  not  be  the  less  an  infringement'  (said  Lord 
Cairns,  C.,  in  l>n<lt»>i<  \.  Thomson,  L.  R.  8  App.  Cas.  ill 
'  because  it  has  been  coloured  or  disguised  by  additions  or 
subtraction?,  which  additions  or  subtractions  may  exist 
and  yet  the  thing  protected  by  the  specification  be  taken 
notwithstanding.'  And  in  the  same  case  (p.  53)  Lord 
Blackburn  said,  '  If  part  of  the  property  in  the  invention 
be  really  taken,  there  is  an  infringement,  however  much 
that  may  be  disguised  or  sought  to  be  hidden.  If  that  is 
detected  by  the  patentee,  and  if  what  is  taken  is  really 
part  of  his  property  given  to  him  by  the  letters  patent,  he 
has  a  right  to  proceed  against  the  infringer,  however  in- 
geniously the  colours  may  have  been  contrived  to  try  to 


INFRINGEMENTS  235 

conceal  the  fact  that  there  has  been  a  taking  of  part  of  the 
property.' 

The  following  cases  will  show  clearly  that  to  make  a 
colourable  alteration  in  a  patented  invention,  or  to  arrive 
at  the  same  result  by  means  which  are  substantially  the 
same,  although  independently  discovered,  will  be  an  in- 
fringement of  the  patent.  Walton  took  out  a  patent  for 
making  cards  for  carding  textile  materials  with  the  aid  of 
caoutchouc,  the  object  being  to  obtain  an  increased  degree 
of  elasticity  and  durability.  The  wire  teeth  were  described 
as  inserted  in  a  foundation  of  slices  of  caoutchouc,  on  the 
back  of  which  a  piece  of  cloth  was  cemented.  The  claim 
was  not  confined  to  the  use  of  caoutchouc  in  slices,  but  he 
claimed  the  exclusive  right  of  making  cards  by  fixing  the 
teeth  in  caoutchouc  as  the  fillet,  or  sheet,  or  medium. 
After  the  date  of  this  patent,  Potter  and  Horsfall  took  out 
a  patent  for  a  new  material  for  forming  the  backs  of  cards, 
and  their  mode  of  preparing  it  was  by  repeatedly  passing 
a  woven  fabric  of  a  peculiar  construction  through,  and 
saturating  it  with,  a  solution  of  caoutchouc,  and  then 
drying  it  to  evaporate  the  solvents,  and  leave  the  fabric 
impregnated  and  coated  with  caoutchouc,  the  object  being 
to  render  the  fabric  so  dealt  with  extremely  elastic  in  the 
direction  of  the  thickness  of  the  fabric,  so  as  to  impart 
elasticity  to  the  wire  teeth  when  set.  It  was  held  (Walton 
v.  Potter,  I  W.  P.  C.  585)  that  Potter's  process  fell  within 
the  generality  of  Walton's  claim,  and  was  an  infringement 
of  his  patent.  At  the  trial,  Tindal,  J.,  told  the  jury  that, 
*  when  a  party  has  obtained  a  patent  for  a  new  invention 
made  by  his  own  ingenuity,  it  is  not  in  the  power  of  any 
other  person,  simply  by  varying  in  form  or  in  immaterial 
circumstances  the  nature  or  subject-matter  of  that  inven- 
tion, to  obtain  either  a  patent  for  it  himself,  or  to  use  it 
without  the  leave  of  the  patentee,  because  that  would  be 
in  effect  and  in  substance  an  evasion  of  the  right.'  Then 
referring  to  a  card  purchased  from  the  defendants,  which 
was  produced  to  the  jury,  he  said,  '  Now,  what  you  have 
to  say  is,  whether  you  are  satisfied  that  the  card  produced 


236  INFRINGEMENTS 

IB  a  specious  variation  in  form  only,  an  ingenious  alteration 
in  the  mode  of  adaptation,  or  whether  it  is  really  and  sub- 
stantinlly  a  new  discovery  on  the  part  of  the  defendants. 
In  the  one  case  it  would  be  an  infringement  of  the  pat 
in  the  other  it  would  not.  .  .  .  There  can  be  no  doubt 
whatever  that,  although  one  man  has  obtained  a  patent 
for  a  given  object,  there  are  many  modes  still  open  for 
other  men  of  ingenuity  to  obtain  a  patent  for  the  same 
object ;  there  may  be  many  roads  leading  to  one  place ; 
and  if  a  man  has,  by  dint  of  his  own  genius  and  discovery, 
after  a  patent  has  been  obtained,  been  able  to  give  to  the 
public,  without  reference  to  the  former  one,  or  borrowing 
from  the  former  one,  a  new  and  superior  mode  of  arriving 
at  the  same  end,  there  can  be  no  objection  to  his  taking 
out  a  patent  for  that  purpose.  But  he  has  no  right  what- 
ever to  take,  if  I  may  so  say,  a  leaf  out  of  his  neighbour's 
book,  for  he  must  be  contented  to  rest  upon  his  own  skill 
and  labour  for  the  discovery,  and  he  must  not  avail  himself 
of  that  which  has  been  before  granted  exclusively  to 
another ;  and  therefore  the  question  again  comes  round 
to  this,  whether  you  are  of  opinion  that  the  subject-matter 
of  this  second  patent  is  perfectly  distinct  from  the  former, 
or  whether  it  is  virtually  bottomed  upon  the  former,  vary- 
ing only  in  certain  circumstances  which  are  not  material 
to  the  principle  and  substance  of  the  invention.' 

Under  a  patent  for  improvements  in  apparatus  for  the 
manufacture  of  sulphate  of  soda,  &c.,  the  plaintiff  claimed 
the  use  of  iron  retorts  worked  in  connection  with  each 
other.  The  essence  of  the  invention  was  held  to  be  the 
use  of  two  chambers  with  separate  furnaces  worked  in  con- 
nection with  each  other,  so  that  the  materials  might  be 
decomposed  in  one  and  then  removed  to  and  finished  in 
the  other.  The  defendant  for  the  same  purpose  employed 
two  chambers,  one  of  iron,  the  other  of  brick.  This  was 
decided  to  be  an  infringement  of  the  patent.  (Gamble  v. 
Kurt-,  3  C.  B.  425.) 

Trotman  obtained  a  patent  for  improvements  in  anchors. 
His  mode  of  making  the  improved  anchor  was  to  affix  the 


INFKINGEMENTS  237 

'  palm '  and  '  horn  '  to  the  back  of  the  *  arm  '  by  a  separate 
operation.  It  was  held  that  the  making  of  similar  anchors 
by  forging  the  arm,  palm,  and  horn  all  in  one  piece  was 
an  infringement.  (Trotman  v.  Wood,  16  C.  B.  N.  s.  479.) 

In  1871  E.  L.  Hayward  obtained  a  patent  for  an  im- 
proved pavement-light.  A  piece  of  glass  in  the  form  of  a 
prism  was  fitted  into  a  frame  and  let  into  a  floor  with  the 
object  not  only  of  allowing  light  to  pass  through,  but  also 
of  sending  it  obliquely  into  the  room  below.  In  1874 
Hamilton  took  out  a  patent  for  a  contrivance  for  the  same 
purpose.  He  employed  also  a  prism  of  glass  shaped  like 
that  used  by  Hayward,  except  that  pieces  were  cut  out  of 
it.  The  Court  of  Appeal  held  that  as  the  notches  had  no 
effect  on  the  strength  of  the  apparatus,  nor  any  optical 
effect,  affording,  in  fact,  no  advantage  whatever,  there  was 
no  substantial  difference,  between  the  two'  contrivances,  and 
the  second  patent  was  therefore  adjudged  to  be  an  infringe- 
ment of  the  earlier  one.  (Hayward  v.  Hamilton,  1  Griff.  P. 
C.  115.)  And  in  Hayward  &  Eckstein  v.  Pavement  Light 
Co.  (1  E.  P.  C.  207),  the  judge  at  the  trial  of  an  action  for 
the  infringement  of  the  same  patent  held  that  the  use 
of  glass  moulded  so  as  to  form  a  curve  was  an  infringe- 
ment. 

It  is  not  permissible  for  a  person  to  evade  a  patent  by 
making  immaterial  transpositions  of  parts  of  a  machine 
(Cropper  v.  Smith,  W.  N.  1883,  p.  49  ;  1  E.  P.  C.  84) ; 
or  by  making  one  part  act  indirectly  instead  of  directly 
(Kaye  v.  Chubb,  4  E.  P.  C.  23 ;  S.  C.  on  appeal,  5  E.  P.  C. 
641) ;  or  by  altering  the  shape  of  part  of  a  machine  in  an 
unimportant  particular  (Per  Parke,  B.,  in  Barber  v.  Grace, 
1  Exch.  339) ;  or  by  transposing  the  action  of  some  of 
the  parts,  as,  for  example,  in  a  brick  machine,  moving  the 
clay  against  the  cutters,  instead  of  making  the  cutters 
move  against  the  clay  (Murray  v.  Clayton,  L.  E.  7  Ch.  570)  ; 
or,  in  a  machine  for  marking  out  the  court  in  the  game  of 
lawn  tennis,  removing  the  marking  wheel  from  behind  to 
the  front,  and  substituting  a  revolving  brush  for  a  feeding 
wheel  (Osmond  v.  Hirst,  2  E.  P.  C.  265) ;  or  in  a  mechani- 


nil  musical  instrument,   t •mjtl.»ying  a  rotating  wind  chest 
and  a  fixed  music  sheet  in  place  of  a  fixed  wind  cheht 
a  rotating  music  she.  «/<  \.  //./.  • ,  .".  ];.  I'.  C.  188; 

aflirmrd  on  uppnil,  .*.   II.  1'.  < 

(8  1'  it  u;is  laid  down  by  I  .  <  .  tlmt  a  man 

CM  mill  not  evade  a  pat«-nUv's  ri^ht  by  substituting  a  bj 
for   a  weight.     And   in   Wtnl<i  \.  Manchegtcr,  <('• . 
Tr.tmicays  Co.  (6  1:.   I'.  C.  359),  it  was  h«  1-1  that  a  patent 
was  not  to  be  evaded  by  substituting  a  weighted  lever  for 
a  spi  i 

The  specification  under  a  patent  for  a  telephone  claimed 
a  combination  of  a  diaphragm  or  tympanum  with  a  Unsion- 
regulator.  In  this  arrangement  the  diaphragm  was  placed 
the  mouth  when  speaking  into  the  instrument,  and  its 
vibrations  acted  on  the  tension-regulator  behind.  Bassano 
employed  for  the  same  purpose  an  apparatus  in  which  a 
tension-regulator  was  nearest  the  mouth  and  what  was 
equivalent  to  a  diaphragm  was  placed  behind.  It  was 
held  that  he  had  infringed  the  patent.  (L'tnt- </  7 .  /.y 
Co.  v.  Bassano,  8  R.  P.  C.  295.  See  also  I'ni-  h<,nr 

.  St.  George,  8  R.  P.  C.  321.) 

And  it  has  been  held  that  a  patent  for  improvements 
in  a  known  process  secures  those  improvements  to  the 
patentee,  whether  applied  to  the  process  as  known  at  the 
date  of  the  patent,  or  to  the  same  process  altered  and  im- 
proved by  discoveries  not  known  at  that  time,  so  long  as 
that  process  remains  essentially  the  same.  (Kl  •  • 
jiraph  Company  v.  lir.-tt,  10  C.  B.  881.) 

jn/'/i  the  Principle  is  Xeic. — '  "\Yhen  you  have  invented 
some  mode  of  carrying  the  principle^into  effect,'  said  A 
son,  JL,  in  Jup<-  v.  Pratt  (1  W.  P.  C.  146),  'you  are  en- 
titled to  protect  yourself  from  all  other  modes  of  carrying 
the  same  principle  into  effect/ 

4  There  never  were  two  things  to  the  eye  more  different,' 
said  AUerson,  B.  (1  W.  P.  C.  146),  commenting  upon  the 
case  of  Crosslfy  v.  Bcvcrlcy,  '  than  the  plaintiff's  invention 
of  a  gas-meter,  and  what  the  defendant  had  done  in  contra- 
vention of  the  patent  right.  The  plaintiff's  invention  was 


INFRINGEMENTS  239 

different  in  form,  different  in  construction ;  it  agreed  with 
it  only  in  one  thing,  and  that  was,  by  moving  in  the  water, 
a  certain  point  was  made  to  open,  either  before  or  after,  so 
as  to  shut  up  another,  and  the  gas  was  made  to  pass  through 
this  opening ;  passing  through  it,  it  was  made  to  revolve  it. 
The  scientific  men,  all  of  them,  said,  the  moment  a  practical 
scientific  man  has  got  that  principle  in  his  head  he  can 
multiply,  without  end,  the  forms  in  which  that  principle 
can  be  made  to  operate.' 

A  patent  having  been  obtained  for  the  application  of  a 
self-adjusting  leverage  to  chairs,  an  action  for  an  infringe- 
ment was  brought  in  which  the  defendant  contended  that 
the  plaintiff  claimed  a  principle,  inasmuch  as  the  defendant's 
method  of  applying  the  leverage  to  chairs  was  different  from 
the  plaintiff's.  *  But,'  said  Mr.  Baron  Parke,  '  for  the  appli- 
cation of  a  self-adjusting  leverage  to  a  chair,  cannot  he 
patent  that  ?  He  claims  the  combination  of  the  two,  no 
matter  in  what  shape  or  way  you  combine  them ;  but  if 
you  combine  the  self-adjusting  leverage,  which  he  thus 
applies  to  the  subject  of  a  chair,  that  is  an  infringement  of 
the  patent '  (Minter  v.  Mower,  1  W.  P.  C.  134.) 

In  the  case  of  the  Houseliill  Company  v.  Neilson  (1  W. 
P.  C.  685),  Lord  Justice  Clerk  Hope  said,  'You  may  obtain 
a  patent  for  a  mode  of  carrying  a  principle  into  effect ;  and 
if  you  discover  not  only  the  principle,  but  how  it  may  be 
applied  to  a  practical  result  by  a  mechanical  contrivance 
and  apparatus,  and  show  that  you  are  aware  that  no  parti- 
cular modification  or  form  of  the  apparatus  is  essential  in 
order  to  obtain  benefit  from  the  principle,  then  you  may 
take  out  your  patent  for  the  mode  of  carrying  it  into  effect, 
and  are  not  under  the  necessity  of  confining  yourself  to  one 
form  of  apparatus.  .  .  .  You  may  generally  claim  the  mode 
of  carrying  the  principle  into  effect  by  mechanical  contri- 
vance, so  that  any  sort  of  apparatus  applied  in  the  way 
stated  will  more  or  less  produce  the  benefit,  and  you  are 
not  tied  down  to  any  form.' 

In  the  case  of  Otto  v.  Linford  (Court  of  App.,  46  L.  T. 
N.  s.  85),  it  appeared  that  the  plaintiff  had  patented  a 


240  INFRINGEMENTS 

gas  engine  working  on  a  certain  new  prim-ipl,-,  and  that  the 
defendant  had  subsequently  constructed  an  engine  woi 
in  ratln-r  a  diffm-nt  way  with  two  pistons  instead  of  one, 
and  with  six  motions  in  place  of  four,  which  required  th-- 
cams,  slides,  &c.,  to  be  altered.  It  was  In  M  that  notwith- 
standing these  differences,  as  he  had  borrowed  the  plaintiffs 
new  principle,  his  engine  was  substantially  similar  to  the 
plaintiff's,  and  was  therefore  an  infringement.  '  It  appears 
to  me  to  be  pretty  clear  upon  the  authorities,  that,  alth- 
tin  re  cannot  be  a  patent  for  an  idea  or  principle  apart  from 
its  physical  •  nihndiment  in  adequate  apparatus,  yet  that  if 
thr  specification  discloses  tin-  idea,  shows  a  method  hy 
which  it  can  be  carried  out,  and  does  not  limit  the  claim 
of  the  patentee,  any  apparatus  which  hy  different  mechanical 
means  carries  out  the  same  idea  is  an  infringement  of  the 
patent,  though  the  method  used  and  even  the  purpose  to 
which  the  idea  or  principle  is  applied  be  different  from 
those  embodied  in  the  specification.'  (Per  Mr.  Jn*ti<--  \  i 
in  K.ist.-rhrnnl;  v.  (i.  If.  E.  Co.,  2  R.  P.  C.  207.) 

And  the  same  doctrine  holds  good  in  chemical  inventions. 
'When  a  patent  is  taken  out  for  a  new  result'  (said  Mr. 
Justi  ••/»,  in  delivering  judgment  in  the  case  of  the 

]{aiii*dn'  Anilin  nnd  Soda  FabriL  \.  1  '1  Ch.  D. 

L.  It.  156),  'and  there  is  one  process  described  in  the 
specification  which  is  effectual  for  the  purpose  of  arri 
at  that  new  result  at  the  time  when  the  patent  is  taken 
out,  the  patentee  is  entitled  to  protection  against  all  other 
processes  for  the  same  result ;  and  no  person  can,  without 
infringing  upon  his  patent,  adopt  simply  a  different  process 
for  arriving  at  the  same  result.' 

•  Win -re  the  thing  is  wholly  novel,  and  one  that  has 
never  been  achieved  before,  the  machine  itself  which  is  in- 
vented necessarily  contains  a  great  amount  of  novelty  in 
all  its  parts,  and  one  looks  very  narrowly  and  very  jealously 
upon  any  other  machines  for  effecting  the  same  object,  to 
see  whether  or  not  they  are  merely  colourable  contrivances 
for  evading  that  which  has  been  done  before.'  (Per  Wood, 
V.  C.,  in  Curtis  v.  Plait,  L.  B.  3  Ch.  135  n.) 


INFRINGEMENTS  241 

It  seems  a  fair  inference  from  the  cited  judicial  dicta  in 
the  cases  of  Jupe  v.  Pratt ;  Houscliill  Co.  v.  Neilson ; 
Minter  v.  Wells  ;  Eastcrbrook  v.  G.  W.  It.  Co. ;  and  Badische 
Anilin  und  Soda  Fabrik  v.  Levinstein,  to  say  that  they  tend 
to  establish  the  proposition  that  when  a  mode  of  carrying  a 
principle  into  effect  has  been  invented  and  the  principle 
itself  is  new,  then  a  patent  can  be  obtained  for  securing  not 
only  that  particular  mode  but  every  other  mode  of  carrying 
the  principle  into  effect.  But  L.  J.  Cotton,  when  delivering 
judgment  in  the  case  of  the  A utomatic  Weighing  Machine  Co. 
v.  Knight  (6  E.  P.  C.  304),  an  action  brought  for  an  infringe- 
ment of  the  plaintiff's  machine,  commented  on  Baron  Alder- 
son's  words  in  Jupe  v.  Pratt  (cited  ante,  p.  238),  and  made 
the  following  remarks  :  '  Those  were  the  expressions  of  Mr. 
Baron  Alderson  during  the  discussion,  probably  to  meet 
something  that  was  said  by  counsel,  and  did  not  express  his 
full  opinion.  You  can  prevent  anyone  from  using  the 
same  method  of  carrying  that  principle  into  effect,  and  you 
can  prevent  anyone  from  using  only  the  same  thing  with 
a  colourable  difference.  .  .  Where  there  is  a  principle  first 
applied  in  a  machine  capable  of  carrying  it  into  effect,  the 
Court  looks  more  narrowly  at  those  who  carry  out  the  same 
principle,  and  say  they  do  it  by  a  different  mode,  and  looks, 
to  see  whether  in  effect,  although  the  mode  is  not  exactly 
the  same,  it  is  only  a  colourable  difference.  .  .  What  I  said1 
in  Proctor  v.  Bennis  (4  E.  P.  C.  333)  was,  "  Has  the  combi- 
nation in  substance  been  taken  ?  Has  the  defendant,  though 
not  exactly  taking  the  whole  combination  which  has  been 
patented,  taken  by  slight  variations  or  by  mechanical 
equivalents,  the  substance  of  it,  so  as  to  produce  the  same 
result  by  practically  the  same  means  ?'"...  In  the  weighing 
machine  case  it  had  been  argued  by  the  plaintiff's  counsel 
that  his  machine  was  the  first  machine  which  had  been  in- 
vented to  act  upon  a  certain  principle,  which  principle  had 
been  adopted  by  the  defendant,  but  with  some  differences 
in  the  mechanism,  and  that  he  was  therefore  liable  for  an 
infringement  notwithstanding  these  differences.  To  this  Zv. 
J.  Cotton  replied,  '  A  patent  cannot  be  taken  out  for  a  prin- 


LMJ 

«-i|»l.-.  It  can  only  be  taken  out  if  in  addition  t«>  »h«>  prin- 
ciple sliM\\n  the  patentee  shows  some  mode  of  carrying 
that  effi rtimlly  into  operation.'  And  the  Court  of  Appeal 
held  that  tin  n  had  been  no  infringement  of  the  plaintiff K 
patent,  because  the  defendant  had  employed  diff. 
mechanism.  See  also  Aut<>w,;  //  /  ftfodbfen  <  'n.  v. 

r,.»;»/i/H../   \\;-i,ihiwi  Mnchiii.-  Co.  (K  II.   1'.  C.  867). 

}\'h>-r>-th,-  J'rinrij,!,  ,x  //,,/  \,  ,r. — We  have  seen  that  • 
are  judicial  dicta  which  imply  that  where  tin  -principle  of  an 
invention  is  new,  the  patentee  may  secure  not  only  the 
method  of  carrying  it  out  described  hy  him,  but  all  other 
methods  that  fall  under  the  same  principle.  On  the  oth«  r 
hand,  where  the  principle  is  not  new  the  patentee  is  confined 
to  the  particular  method  described,  and  his  patent  will  not 
be  allowed  to  cover  other  methods.  Thus  in  / 

>•  (1  Exch.  339) ,  it  was  held  that  the  pressing  of  woollen 
goods  by  a  set  of  rollers,  heated  within  by  steam,  was  not 
an  infringement  of  a  patent  for  a  mode  of  pressing  similar 
goods  by  two  cast-iron  boxes  filled  with  steam.  The  jury 
found  that  the  former  was  not  a  colourable  variation  of  the 
latter  process,  and  the  Court,  after  argument,  approved  of 
the  finding.  (See  also  Easterbrook  v.  G.  W.  R.  Co.,  2  R. 
P.  C.  201.) 

In  Curt  in   v.   Matt  (L.  R.  3  Ch.  D.  185  it.),  ,Si>  II*.  /'. 

;.  I'.  C.,  said,  '  When  the  object  itself  is  one  which  is 
not  new,  but  the  means  only  are  new,  one  is  not  inclined 
to  say  that  a  person  who  invents  a  particular  means  of 
doing  something  that  has  been  known  to  all  the  world  l"ir.: 
before  has  a  right  to  extend  very  largely  the  interpretation 
of  those  means  which  he  has  adopted  for  carrying  it  into 
effect.  Because,  otherwise,  that  would  be  to  say  that  the 
whole  world  is  to  be  precluded  from  exercising  its  invention 
for  achieving  some  desirable  and  well-known  object  which 
everybody  has  had  in  view  for  years.  One  looks  more 
jealously  at  the  claims  of  inventors  seeking  to  limit  the 
rights  of  the  public  at  large  for  effecting  that  which  has  been 
commonly  known  to  all  the  world  long  ago.  Of  course  no 
patent  can  be  taken  out  for  effecting  this  as  a  new  object, 


INFEINGEMENTS  243 

but  only  for  effecting  it  by  a  new  means.  What  those 
means  may  be,  and  what  is  the  extent  of  the  claim  which 
the  patentee  has  a  right  to  insist  upon  as  to  those  means, 
is  often  a  matter  of  much  difficulty.' 

'  Where  there  is  the  principle  first  introduced  in  the 
(patented)  machine  we  look  upon  it  with  very  different 
eyes  to  what  we  do  when  what  the  patentee  has  done  is 
simply  by  some  variation  to  make  an  improvement  in  an 
existing  machine.  Then  he  is  confined  to  the  actual  thing 
he  has  produced  as  an  improvement  in  an  existing  machine, 
and  we  cannot  say,  if  anyone  else  were  to  take  some  other 
mechanical  means  of  arriving  at  the  same  end,  that  that  is 
an  infringement.'  (Per  L.  J.  Cotton,  in  Proctor  v.  Bennis, 
L.  E.  36  Ch.  D.  740.) 

Hence  if  another  person  invents  a  method  of  carrying 
out  the  same  object  different  from  that  patented,  he  may 
obtain  a  valid  patent  for  it,  or  he  may  use  it  without  being 
liable  for  an  infringement,  since  the  inventions  stand  in- 
dependently one  of  the  other,  each  inventor  being  limited 
to  his  own  particular  combination  or  method.  Identity  of 
object  must  not  be  mistaken  for  identity  of  means.  The 
patented  apparatus  is,  under  the  supposed  circumstances, 
nothing  more  than  a  particular  mode  of  attaining  a  certain 
end,  and  if  one  man  is  entitled  to  a  patent  for  one  road  to 
that  end,  any  other  person  is  on  the  same  ground  entitled 
to  a  patent  for  another  road  to  the  same  end. 

Where  a  patent  has  been  obtained  for  improvements  in 
an  old  machine  and  there  is  no  novelty  in  the  result,  the 
patentee  will  be  held  strictly  to  his  description  of  the  par- 
ticular means  by  which  his  invention  is  to  be  carried  into 
effect,  and  the  doctrine  of  mechanical  equivalents  will  not 
be  applicable.  (Curtis  v.  Platt,  L.  K.  3  Ch.  D.  136  n., 
139  n. ;  Saxby  v.  dunes,  43  L.  J.  Ex.  228 ;  Dudgeon  v. 
Thomson,  L.  K.  3  App.  Cas.  34 ;  Nordenfeldt  v.  Gardner,  on 
appeal,  1  E.  P.  C.  61 ;  Hocking  v.  Hocking,  House  of 
Lords,  6  E.  P.  C.  76.) 

As  an  example  of  this  class  of  cases,  Bovill  v.  Pimm 
(11  Ex.  E.  718)  may  be  referred  to. 

B  2 


244  KMKNT9 

It  had  been  long  known  that  if  grain  were  kept  cool 
during  the  process  of  grinding,  the  flour  was  of  superior 
quality.  To  effect  this  desideratum  various  uices 

had  been  adopted,  and  siv.ral  |-at«-nN  had  been  obtained 
for  them,  before  Bovill  obtained  one  for  an  im>nti<>n  con- 
sisting of  the  application  of  ventilating  vanes  or  screws  at 
the  centre  of  the  grinding-stones,  by  which  means  air  was 
supplied  between  the  grinding  surfaces.  A  portable  venti- 
lating machine,  blowing  in  a  screw  vane,  which  caused  a 
flow  of  air  parallel  to  the  axis  of  the  vane,  was  attached 
nally  to  the  eye  of  the  upper  millstone.  Wlien  the 
screw  vane  was  set  in  motion  air  was  compelled  to  pass 
through  the  eye  of  the  upper  millstone  into  the  centre  of 
the  two  stones,  and  found  its  way  out  between  tin  m. 
Pimm  subsequently  took  out  a  patent  for  improvements  in 
grinding  wheat.  His  plan  for  keeping  the  grain  cool  whilst 
grinding  consisted  in  the  removal  from  the  centre  of  both 
stones  of  a  large  circular  portion,  and  in  the  space  thus 
obtained  to  place  a  fan,  by  the  rapid  rotation  of  which  a 
centrifugal  motion  was  given  to  the  air,  and  it  was  driven 
between  the  stones.  It  was  held  that  the  latter  method 
was  no  infringement  of  Bovill's ;  the  two  inventions  were 
deemed  independent  original  improvements,  and  each  in- 
ventor was  entitled  to  protection  in  respect  of  the  method 
disclosed  in  their  respective  specifications,  but  could  not 
claim  beyond  the  method  actually  described. 

An  action  was  brought  for  the  infringement  of  a  patent 
dated  in  1877  for  improvements  in  machinery  for  winding, 
doubling,  and  twisting  yarn  and  thread.  As  there  were 
1'ivvious  machines  for  the  same  purpose  as  the  plaintiffs, 
all  of  which  included  a  swinging-plate  and  a  catch-plate, 
and  as  the  plaintiff  laid  special  stress  on  the  particular 
form  of  his  catch-plate  as  an  important  improvement,  and 
when  describing  the  machine  said  he  did  not  claim  the 
combination  of  a  swinging-plate  with  any  catch-plate,  but 
only  the  combination  of  a  swinging-plate  with  a  catch- 
plate  as  described  in  the  specification,  it  was  held  by  the 
Court  of  Appeal  that  the  plaintiff  was  bound  to  this  limited 


INFRINGEMENTS  245 

claim,  and  as  the  defendant  did  not  use  a  catch-plate  in  his 
machine  he  had  not  infringed  the  patent.  (Boyd  v.  Horrocks, 
6  E.  P.  C.  152.) 

On  the  other  hand,  where  there  is  not  only  novelty  in 
the  patented  machine,  but  also  in  the  result  produced  by 
the  machine,  the  doctrine  of  mechanical  equivalents  will  be 
applied  in  the  case  of  an  alleged  infringement.  For  in- 
stance, a  patent  was  obtained  for  an  improved  and  self- 
acting  mechanism  for  supplying  and  distributing  fuel  at 
intervals  over  the  fire  surface  of  furnaces.  From  the 
specification  it  appeared  that  the  object  of  the  patent  was 
the  automatic  placing  of  coal  on  a  fire  by  intermittent 
radial  motion,  and  this  object  was  proved,  at  the  trial  of  an 
action  for  an  infringement,  to  be  new  and  effected  by  a  new 
combination.  It  was  also  shown  that  in  the  defendant's 
mechanism  the  motion  was  intermittent  and  radial,  and 
produced  by  means  of  a  radius  as  in  the  plaintiff's  mechan- 
ism ;  but  there  was  this  difference :  that  in  the  plaintiff's 
contrivance  the  shaft  was  actuated  by  tappets  and  a  spring, 
the  radius  being  attached  to  the  shaft,  whilst  in  the 
defendant's  contrivance  the  radius  itself  was  actuated  by 
tappets  and  a  spring,  the  radius  working  on  a  pin.  Thus 
the  same  radial  motion,  with  the  same  result,  was  produced 
by  substantially  similar  means.  The  Court  of  Appeal, 
here  applying  the  doctrine  of  mechanical  equivalents, 
held  that  the  defendant's  mechanism  was  an  infringe- 
ment. (Proctor  v.  Bennis,  4  E.  P.  C.  354,  359,  361.)  See 
also  Gosnell  v.  Bishop,  on  appeal  (5  E.  P.  C.  156,  159)  ; 
Ehrlich  v.  Ihlee,  on  appeal  (5  E.  P.  C.  437)  ;  Thomson  v. 
Moore,  Court  of  Appeal,  Ireland  (6  E.  P.  C.  426). 

In  the  case  of  interfering  patents,  the  following  rule 
was  laid  down  by  Pollock,  C.  B.,  in  Bush  v.  Fox  (Macr. 
P.  C.  165) :  '  Whenever  it  appears  that  the  use  of  a  prior 
patent  invention  would  be  an  infringement  of  a  subsequent 
patent,  the  second  patent  cannot  be  sustained.'  See  also 
Thomas  v.  Foxwell  (5  Jur.  N.  s.  39) ;  Betts  v.  Menzies  (1 
Ell.  &  Ell.  1020) ;  and  Kaye  v.  Chubb  (4  E.  P.  C.  298). 

In  Saxby  v.  Hcnnctt  (L.  E.  8  Ex.  210),  it  was  held  that 


246  RDfOEMEXTS 

where  two  patents  are  in  existence  for  the  same  invention, 
acts  done  uml.-r  the  patent  of  later  date  are  infringements 

of  the  earlier  patent. 

Invention  of  Improvement  A  n<>  />«//  nee. — A  person  is  at 
liberty  to  patent  an  improvement  upon  an  invention  which 
forms  the  subject  of  an  existing  patent,  without  rend< 
himself  liable  for  an  infringement ;  hut  he  will  not  be  able 
to  use  the  improved  invention  before  the  expiration  of 
tar  Her  patent  unless  he  obtains  the  licence  of  the  patentee. 
(Litter  \.  Leather,  8  E.  <t  B.  1004.)     It  is  no  defence  to 
an  action  for  an  infringement  to  say  that  the  infringer 
has  invented  improvements.    The  case  of  Itmn 

(48  L.  J.  Ex.  228)  arose  out  of  the  alleged  infringement 
of  a  patent  for  a  mode  of  working  the  points  and  signals  of 
railways.  "When  it  went  on  appeal  to  the  House  of  Lords, 
Lord  Chi-lmsi'nrd  said  that,  although  the  defendant's  inven- 
tion was  a  great  improvement  upon  the  plaintiff's,  yet  if, 
in  carrying  it  out,  the  former  made  use  of  any  part  of  the 
invention  to  which  the  plaintiff's  patent  extended,  and 
which  was  new  and  material,  it  was  an  infringement.  See 
also  the  case  of  Wlritr  v.  Fcnn  (15  W.  R.  348). 

In  the  case  of  l>mrt,,r  \.  Ji.nms  (4  K.  P.  C.  353), 
an  action  for  an  infringement  which  went  to  the  Court  of 
Appeal,  L<>ril  Jnxtir.-  Cnttmt  made  the  following  observations : 
'  What  was  very  much  relied  on  (by  the  defendant)  was 
this :  that  there  are  certain  omissions  in  the  defendant's 
machine  of  parts  which  there  are  in  the  plaintiff's  combi- 
nation, and  that  there  are  certain  things  in  the  defendant's 
machine  not  found  in  the  plaintiff's,  producing  a  result 
which  is  not  obtained  in  the  plaintiff's.  .  .  .  Now,  if  in  fact 
the  defendant  has  .  .  .  made  an  improvement,  that  will  not 
enable  him  to  take  the  plaintiff's  combination  which  he  has 
protected  without  infringing  the  plaintiff's  patent.  .  .  . 
The  mere  fact  that  there  are  certain  parts  omitted  or 
certain  parts  added,  if  he  really  has  taken  the  substance 
and  essence  of  the  plaintiff's  combination,  cannot  prevent 
his  machine  being  an  infringement  of  the  plaintiff's.  .  .  . 
If  in  substance  and  in  essence  the  combination  is  taken, 


INFKINGEMENTS  247 

and  practically  the  same  parts,  or  the  parts  in  which  there 
is  a  variation,  or  for  which  there  are  mechanical  equiva- 
lents, are  so  arranged  as  to  produce  the  same  result,  then 
the  essence  of  the  invention  has  been  taken,  and  an  in- 
fringement has  been  committed  by  the  defendant  who 
makes,  sells,  or  uses  these  machines.'  (And  see  Wenham 
Co.  v.  May,  4  E.  P.  C.  308  ;  Hocking  v.  Hocking,  4  E.  P.  C. 
442 ;  Ehrlich  v.  Ililee,  appeal,  5  E.  P.  C.  437.) 

Common  Dilemma. — In  actions  for  infringements  the 
defendant's  defence  frequently  endeavours  to  place  the 
patentee  on  one  or  the  other  horn  of  the  dilemma,  an 
example  of  which  is  afforded  by  the  case  of  Macnamara  v. 
Hulse,  cited  in  the  chapter  on  Novelty.  If  the  patentee's 
claim  is  read  in  a  wider  sense  so  as  to  cover  the  alleged 
infringement,  it  is  met  by  a  charge  of  anticipation  ;  if  read 
in  a  narrower  sense  so  as  to  avoid  that  difficulty,  there  is 
no  infringement.  (Stevens  v.  Keating,  2  W.  P.  C.  194 ; 
Doicncs  v.  Falcon  Works,  3  E.  P.  C.  70  ;  Kaye  v.  Chubb, 
4  E.  P.  C.  289  ;  Gosnell  v.  Bishop,  5  E.  P.  C.  158  ;  Elling- 
ton v.  Claris  5  E.  P.  C.  327  ;  Hutchison  v.  Patullo,  4  E.  P.  C. 
359.) 

COMBINATIONS. 

With  regard  to  the  infringement  of  patents  obtained  for 
a  general  arrangement  and  combination  of  numerous  parts, 
all  of  them  old,  or  some  old  and  some  new,  the  whole  in 
either  case  forming  a  new  apparatus  or  machine,  questions 
of  some  complication  may  arise,  and  it  may  not  be  easy  to 
decide  in  a  given  case  whether  what  has  been  done  amounts 
to  an  infringement  or  not.  A  patentee  may  assert  that, 
although  his  invention  as  described  in  the  specification  has 
not  been  exactly  copied  by  another  person  part  by  part, 
yet  sufficient  has  been  taken  to  bring  it  within  the  reach 
of  the  law  and  render  him  liable  as  an  infringer.  In  other 
words,  that  the  differences  are  merely  colourable,  and  that 
the  inventions  specified  by  the  patentee  and  practised  by 
the  defendant  are  substantially  identical.  On  the  other 
hand,  the  alleged  infringer  may  aver  that  what  he  has 
done,  though  directed  to  the  same  object  and  producing  a 


248 

similar  result,  has  been  effected  by  methods  that  were 
open  to  all  the  world,  and  that  if  the  means  employed  by 
him  are  to  a  certain  extent  similar  to  thoae  employed  by 
the  patentee,  they  yet  differ  so  far  as  to  render  his  process 
or  apparatus  a  distinct  and  independent  mode  of  arriving 
at  a  common  end,  and  do  not  constitute  an  illegal  copy  or 
evasion  of  the  patentee's  method.  These  opposite  views 
may  both  be  supported  by  witnesses  of  equal  weight  and 
credibility,  and  thus  a  very  difficult  question  of  fact  may 
be  placed  before  a  jury  or  submitted  to  the  decision  of  a 
judge.  Those  upon  whom  may  devolve  the  duty  of  decid- 
ing a  controversy  of  this  nature  will  anxiously  seek  to  dis- 
cover on  which  side  lies  the  preponderance  of  probability 
after  hearing  the  whole  case. 

When  the  case  L'lnrk  v.  A<lict  which  arose  out  of  an 
alleged  infringement  of  a  patent  for  improvements  in  ap- 
paratus for  clipping  horses,  was  taken  on  appeal  to  the 
House  of  Lords  (L.  R.  2  App.  Cas.  815),  LordC'<iim.<,  L.  C., 
made  the  following  general  remarks  on  infringements  of 
patents  for  inventions  of  this  nature:  (1)  'One  mode  of 
infringement  would  be  a  very  simple  and  clear  one :  the 
ii  if  ringer  would  take  the  whole  instrument  from  beginning 
to  end,  and  would  produce  a  clipper  made  in  every  respect 
like  the  clipper  described  in  the  specification.  About  an  in- 
fringement of  that  kind  no  question  could  arise.'  (2)  '  The 
second  mode  would  be  one  which  might  occasion  more 
difficulty.  The  infringer  might  not  take  the  whole  of  the 
instrument,  but  he  might  make  an  instrument  which  in 
many  respects  might  resemble  the  patented  instrument, 
but  would  not  resemble  it  in  all  its  parts.  And  there  the 
question  would  be,  whether  that  which  was  done  by  the 
alleged  infringer  amounted  to  a  colourable  departure  from 
the  instrument  patented,  and  whether  in  what  he  had  done 
he  had  not  really  taken  and  adopted  the  substance  of  the 
instrument  patented.'  (3)  '  But  there  is  a  third  way  in 
which  it  is  possible  to  conceive  an  infringement  of  a  patent 
of  this  kind.  Inside  the  whole  invention  there  may  be 
that  which  in  itself  is  a  minor  invention,  and  which  does 


INFRINGEMENTS  249 

not  extend  to  the  whole,  but  forms  only  a  subordinate  part 
or  integer  of  the  whole.  Now  again,  that  subordinate 
integer  may  be  a  step  or  a  number  of  steps  in  the  whole, 
which  is  or  are  perfectly  new ;  or  the  subordinate  integer 
may  not  consist  of  new  steps,  but  may  consist  of  a  certain 
number  of  steps  so  arranged  as  to  form  a  novel  combina- 
tion within  the  meaning  which  is  attached  by  the  patent 
law  to  the  term  "  combination."  ...  In  a  patent  of  that 
kind  the  monopoly  would  or  might  be  held  to  be  granted 
not  only  to  the  whole  and  complete  thing  described,  but  to 
those  subordinate  integers  entering  into  the  whole  which  I 
have  described.  But  then  the  invention  must  be  described 
in  that  way  ;  it  must  be  made  plain  to  ordinary  apprehen- 
sion, upon  the  ordinary  rules  of  construction,  that  the 
patentee  has  had  in  his  mind  and  has  intended  to  claim 
protection  for  those  subordinate  integers.'  Proceeding  to 
apply  these  principles  to  the  case  before  the  House,  his 
lordship  said  :  '  I  cannot  find  from  beginning  to  end  of  the 
.specification  any  sentence  or  any  number  of  sentences,  as 
to  which,  by  any  reasonable  interpretation,  you  can  say 
that  they  may  make  a  claim  to  a  subordinate  combina- 
tion of  these  particular  items  as  constituting  in  itself  a 
novelty,  a  new  manufacture,  a  thing  to  be  protected  by  the 
patent.' 

In  the  same  case  (L.  E.  2  App.  Gas.  335),  Lord  Blackburn 
said :  '  I  incline  to  agree  with  what  was  said  by  the  Ex- 
chequer Chamber  in  the  case  of  Lister  v.  Leather,  that  you 
cannot  decide  in  the  abstract  whether  the  using  of  two 
parts  A  and  B  of  a  combination  A  B  and  C  is  or  is  not 
using  part  of  that  invention,  nor  can  you  decide  in  the 
abstract  the  other  question,  whether  or  no  the  specification 
shows  that  A  or  B  is  sufficiently  claimed  as  a  part  of  the 
invention  or  not.  I  do  not  think  that  either  of  those 
questions  can  be  decided  in  the  abstract.  I  would  wish, 
like  the  Exchequer  Chamber  in  Lister  v.  Leather,  before 
deciding,  to  have  before  me  the  nature  of  the  machine,  in 
order  that  I  might  see  what  A  B  and  C  are,  and  what  is 
their  relation  to  each  other.' 


The  following  propositions  are  deduciM.  from  the 
numerous  cases  which  bear  upon  the  infrin^ -ment  of 
patents  relating  to  general  comliiimtionH  and  subordinate 
parts: — 1.  If  a  combination  alone  is  claimed  there  is  no 
infringement  unless  the  entire  combination,  or  the  sub- 
stance of  it,  is  taken.  2.  Subordinate  parts  and  minor 
combinations  will  not  be  protected  unless  they  are  ex- 
pressly claimed.  8.  Subordinate  parts  and  minor  combina- 
tions when  claimed  must  be  new,  useful,  and  patentable 
;••  /•  sf. 

In  the  earlier  cases  (it.  .1  in  the  footnote  '  it  was  laid 
down  that  to  take  a  new  and  material  part  of  a  combina- 
tion, though  not  expressly  claimed,  was  an  infringement. 
Thus,  Lor*/  ('niii]>J»-ll,  in  .  v.  /.,,////./•  (H  E.  <t  li.  in 

error  1032),  said  that  the  cases  established  '  that  a  valid 
patent  for  an  entire  combination  for  a  process  gives  protec- 
tion to  each  part  thereof  that  is  new  and  material  for  that 
process  without  any  express  claim  of  particular  pa 
And  in  Horill  v.  AV///ror///  (7  E.  &  B.  725),  the  Court  said : 
'  Supposing  the  patent  to  be  for  a  combination  consisting 
of  several  parts  for  one  process,  we  are  of  opinion  that  the 
defendants  are  liable  for  having  used  a  material  part  of 
the  process,  which  was  new,  for  the  same  purpose  as  that 
mentioned  in  the  specification,  although  they  did  not  at 
the  same  time  use  all  the  parts  of  the  process  specified.' 

In  later  cases  the  limitation  was  introduced  that  the 
new  and  material  part  must  be  capable  of  being  by  itself 
the  subject-matter  of  a  patent. 

In  The  Iti'tth-  l-:m;-l,,p,-  ( 'o.  v.  fi  '.  Jur.  N.  s.  174, 

C.  P.),  it  was  said  by  the  Court  that  the  infringement  of 
any  part  of  a  patent  process  is  actionable  if  that  part  is  of 
itself  new  and  useful,  so  as  that  it  might  be  the  subject- 

1  Xcicton  v.  Grand  Junction  Railway  Company  (5  Exch.  334) ;  Smith 
v.  London  A  South-Western  Railway  Company  (Macr.  P.  C.  203) ;  Smith  v. 
London  A  North-Western  Railway  Company  (2  E.  &  B.  69);  StlUn  T. 
Dickenson  (5  Exch.  R.  312) ;  Lister  v.  Leather  (8  E.  <t  B.  1004) ;  S.  C.  in 
error  ibid.  1032 ;  Saxby  v.  dunes  (43  L.  J.  Ex.  228) ;  White  v.  Fenn 
(15  \V.  R.  348) ;  Harrison  v.  Anderston  Foundry  Company  (L.  B.  1  App.  Cas. 
574) ;  Dudgeon  v.  Thomson  (L.  B.  3  App.  Cas.  34). 


INFKINGEMENTS  251 

matter  of  a  patent,  and  is  used  by  the  infringer  to  effect 
the  object  or  part  of  the  object  proposed  by  the  patentee. 
Where  a  part  only  of  an  invention  has  been  taken,  it 
must  be  shown  in  order  to  make  out  a  case  for  infringement 
that  the  part  is  one  that  could  stand  by  itself  in  respect  to 
invention  and  in  respect  of  use  as  the  subject  of  a  distinct 
patent.  (Per  Mr.  Justice  Willes  in  Tatliam  v.  Dania,  1 
Griff.  P.  C.  215.)  And  in  Parkcs  v.  Stevens  (L.  E.  8  Eq. 
358),  James,  V.  C.,  held  that  a  patent  for  a  combination 
will  not  cover  any  part  which  would  not  be  of  itself  patent- 
able.  In  deciding  this  case  the  learned  judge  made  these 
remarks  on  the  case  of  Lister  v.  Leather,  cited  above : 
'  The  authority  of  that  case  has  been  pressed  upon  me  as  if 
it  really  established  this,  which  would  be  a  most  startling 
proposition,  that  a  patent  for  a  combination  or  arrangement 
would  be  a  distinct  patent  for  everything  that  was  new  and 
material,  and  that  went  to  make  up  the  combination.  The 
marginal  note,  if  read  hastily,  is  calculated  to  give  some 
colour  to  that  contention.  But  if  the  judgment  be  read  it 
will  be  found  to  give  no  warrant  whatever  for  such,  I  must 

call  it,  baseless  notion It  was  contended  (in  the 

case  before  the  judge)  that  because  it  (a  sliding  door)  was 
as  alleged  a  novel  part  of  a  novel  combination  (forming  a 
lamp),  it  was  protected.  To  say  that  a  patent  for  an  entire 
combination  is  a  valid  patent  for  a  part  when  that  part 
would  not  of  itself  have  been  patentable  is  in  my  judgment 
a  rcductio  ad  absurdum  of  the  supposed  principle  in  Lister 
v.  Leather.' 

In  the  case  of  Harrison  v.  Anderston  Foundry  Co.  (L. 
E.  1  App.  Cas.  574),  Lord  Cairns,  C.,  said :  '  If  it  is  clear 
that  the  claim  is  for  a  combination  and  nothing  but  a  com- 
bination there  is  no  infringement  unless  the  whole  combi- 
nation is  used,  and  it  is  in  that  way  immaterial  whether 
any  or  which  of  the  parts  are  new.'  And  in  the  same  case 
Lord  Chclmsford  said :  '  If  a  patent  is  solely  for  a  combina- 
tion nothing  is  protected  by  it,  and  consequently  nothing 
can  be  infringed,  but  the  use  of  the  entire  combination.' 
See  also  Dudgeon  v.  Thomson  (L.  E.  3  App.  Cas.  34),  and 


•2.'.  "2  INFRINGEMENTS 

the  remarks  of  Sir  <i. ./. x.<, /,  .17.  /;.,  in  '/'..»  MM  /  v.  ll.ut.nth 
(L.  i:.  P-M'h.  D.  887  ».). 

When,  however,  it  is  laid  down  that  to  constitute  an 
infringement  of  a  comliimitinn  the  entire  combination 
must  be  taken,  the  proposition  must  be  understood  in 
sense,  that  if  the  substance  of  the  combination  is  bor- 
1  tin  iv  will  In-  an  infringement,  although  all  the  details 
of  tin-  invention  as  de><-i  il-  >1  1-y  tin-  patentee  may  not  have 
been  taken.  It  is  a  clear  principle  in  patent  law  that  a 
person  cannot  borrow  some  substantial  part  of  that  which 
as  a  whole  is  a  useful  invention,  and  tliuvby  take  the  bene- 
fit of  it,  without  remit  -ring  himself  liable  for  an  infringe- 
ment. 

In  Parkes  v.  ,S>iv;/x  ,L.  R.  8  Eq.  858),  Jai, 
stated  the  law  on  this  branch  of  the  subject  as  follows : 
1  The  law  is  summed  up  thus :  the  cases  establish  that  a 
valid  patent  for  an  entire  combination  for  a  process  gives 
protection  to  each  part  thereof  that  is  new  and  material  for 
that  process ;  which  is  nothing  more  than  stating  in  other 
words  that  you  not  only  have  no  right  to  steal  the  whole, 
but  you  have  no  right  to  steal  any  part  of  a  man's  inven- 
tion ;  and  the  question  in  every  case  is  a  question  of  fact — 
is  it  really  and  substantially  a  part  of  the  invention  ? 
Supposing  that  a  clock  was  now  for  the  first  time  im  • 
and  patented  as  a  machine  for  measuring  and  indicating 
time,  a  man  could  not  evade  the  patentee's  right  by  sul»ti- 
tuting  a  spring  for  a  weight,  or  by  leaving  out  the  whole  of 
the  striking  apparatus/  See  also  Walton  v.  /'••//</  il  W. 
P.  C.  586)  and  Tln>rn  v.  Wnrtlnmj  Sl;atin<i  Jiink  (".<;//;«/»// 
(L.  R.  6  Ch.  D.  415  «.). 

The  case  of  List>  r  v.  leather  (said  I.  ;  /'• 
Harrixtm  v.  An/lerston  Foundry  Co.,  L.  R.  1  App.  Cas.  574) 
decided  nothing  more  than  this,  that  though  the  patent  is 
for  a  combination,  it  does  not  follow  that  there  can  be  no 
infringement  of  it  unless  every  part  of  that  combination 
without  exception  is  pirated.  What  the  Court  said  was 
that  the  taking  of  a  subordinate  part  or  parts  of  the 
combination  miyht  be,  not  that  it  necessarily  would  be,  an 


INFRINGEMENTS  253 

infringement  of  the  patent ;  and  that  whether  it  would  be 
so  or  not  depended,  as  the  Court  of  Error  said, '  upon  what 
the  parts  taken  were,  how  they  contributed  to  the  object  of 
the  invention,  and  what  relation  they  bore  to  each  other.' 
This  only  amounts  to  saying  that  on  a  question  of  infringe- 
ment the  essential  nature  of  the  invention  will  be  regarded ; 
and  that  there  may  be  cases  in  which,  though  the  patent  is 
for  an  entire  combination  of  numerous  parts,  a  collusive 
imitation  of  that  invention  may  be  effected,  though  some 
detail  of  the  combination  is  omitted  or  changed,  which  is  a 
doctrine  familiar  enough  in  patent  law. 

And  see  Flower  v.  Lloyd  (W.  N.  1877,  p.  132)  ;  United 
Telephone  Company  v.  Harrison  (L.  E.  21  Ch.  D.  720). 

'  I  understand  the  rule  to  be  that  if  a  man  uses  a  part 
of  that  to  which  the  patent  applies  for  the  purpose  for 
which  the  patentee  intended  it,  and  for  which  he  has  taken 
out  his  patent,  and  the  difference  is  unsubstantial  or 
colourable,  the  use  of  it  is  an  infringement.'  (Per  Mr. 
Justice  Field  in  Burnett  v.  Tate,  45  L.  T.  N.  s.  143.) 

It  was  decided  in  a  case  where  the  patentee's  combina- 
tion consisted  of  three  old  mechanical  parts,  that  another 
person  might  use  two  of  those  parts  and  substitute  hand- 
power  for  the  third.  (Murray  v.  Clayton,  L.  E.  10  Ch, 
675  n.) 

The  taking  of  one  part  out  of  a  combination  of  three-, 
the  part  taken  not  being  a  substantial  part  nor  capable  of 
being  made  the  separate  subject  of  a  patent,  was  held  not 
to  be  an  infringement.  (Garrard  v.  Edge,  6  E.  P.  C.  372  ; 
affirmed  on  appeal,  6  E.  P.  C.  563.) 

When  a  patent  is  for  a  new  combination  of  machinery, 
every  part  being  old,  it  may  be  that  the  manufacture  of  the 
separate  parts  in  this  country,  and  the  exportation  of  them 
abroad,  will  be  no  infringement ;  but  in  Goucher  v.  Clayton 
(11  Jur.  N.  s.  462,  465)  it  was  held  to  be  otherwise  when 
the  part  so  made  and  exported  is  new  and  is  claimed  as 
new. 

"When  there  are  several  distinct  heads  of  invention,  an 
infringement  of  any  one  renders  the  infringer  liable  to 


INKI:IN.;K.MI:MS 

legal  proceedings.    (<iill,-tt\.  HV%,  1  W.  P.  ('.-71 ; 

d  Ku<in  I'n  ;>any  v.   If '<*>dhaiutt  A  I:.  I'.  (  . 

79.) 

CHEMICAL   PEOCBMU  AXD    PBODftTB. 

Precisely  the  same  rules  of  law  are  applicable  to  the 
case  of  chemical  as  to  the  case  of  mechanical  inventions. 
The  chief  questions  will  continue  to  be,  has  the  new  prin- 
ciple discovered  and  applied  by  the  patentee,  or  his  new 
method  of  carrying  out  a  known  principle,  or  his  new  com- 
I'ination  of  parts  or  ingredients  l»eeii  Injrrowed  by  the 
alleged  infringer? 

In  Steven*  \.  K'-ntimj  c2  \\ .  1'.  ( '.  188),  it  was  a 
question  whether  the  use  of  borax  (a  compound  of  boracic 
acid  and  soda)  was  not  an  infringement  of  a  patent, 
specification  of  which  claimed  the  use  of  acids  and  alkalies 
in  the  preparation  of  cements.  Both  f^onl  ( '<>ttfnham  and 
/W/iu-/,-,  ( '.  li.,  held  that  it  was  an  infringement. 

In  JIancix-l:  v.  Mmilton  (June  1852),  an  application  was 
made  in  the  Court  of  Chancery  for  an  injunction  to 
the  manufacture  by  the  defendant  of  vulcanised  caoutchouc, 
alleged  to  be  an  infringement  of  the  plaintiff's  patent  for 
obtaining  a  certain  product  by  subjecting  a  mixture  of 
sulphur  and  caoutchouc  to  heat.  The  defendant  subse- 
quently obtained  a  patent  for  the  combination  of  hypo- 
sulphate  of  lead  and  artificial  sulphuret  of  lead  with 
caoutchouc ;  that  combined  mass,  acted  upon  by  heat,  was 
alleged  by  the  defendant  to  produce  more  beneficial  results, 
but  the  results  were  of  the  same  character  as  those  which 
were  produced  by  the  plaintiff's  patent.  '  Assuming,'  said 
Turner,  }'.  ('.,  f  the  materials  thus  used  by  the  defendant 
to  be  different,  the  process  of  the  defendant  would  per  »e 
be  no  infringement  of  the  plaintiffs'  patent.  The  plaintiffs 
confined  their  patent  to  sulphur ;  the  defendant  had  used 
hyposulphate  of  lead  and  artificial  sulphuret  of  lead.  But 
it  was  alleged  by  the  plaintiffs  that  the  materials  were  not 
in  truth  different,  or  at  least  that  the  materials  which  pro- 
duce the  result  are  the  same.  It  was  said  that  sulphate 


INFRINGEMENTS  255 

and  sulphuret  of  lead  do  not  of  themselves  produce  the 
change,  but  that  the  change  is  produced  by  the  sulphur 
which  they  contain,  and  which  forms  one  of  their  several 
constituent  parts  ;  and  that  those  parts  being  decomposed 
by  heat,  the  sulphur  combined  with  the  caoutchouc  and  left 
a  residuum  of  lead,  which  had  no  operation  in  the  change 
which  was  effected.  If  the  qualities  conferred  upon  the 
caoutchouc  by  the  process  were  imparted  by  the  sulphur, 
it  would  no  doubt  be  an  infringement  of  the  plaintiffs' 
patent.'  The  judge's  opinion,  after  examining  the  evi- 
dence, was,  that  the  evidence  preponderated  very  consider- 
ably in  favour  of  the  plaintiffs. 

In  the  case  of  Talbot  v.  Laroche  (15  C.  B.  310),  the 
plaintiff  was  the  inventor  of  a  photographic  process,  patented 
in  1841.     The  specification  claimed,  amongst  other  things, 
the  employment  of  gallic  acid  or  tincture  of  galls,  in  con- 
junction with  a  salt  of  silver,  to  render  paper  more  sensitive 
to  the  action  of  light;  and  also  the  making  visible  photo- 
graphic images  upon  paper  by  washing  them  with  liquids 
(meaning  only,  as  other  parts  of  the  specification  showed, 
gallo-nitrate  of  silver)  which  act  upon  those  parts  which 
had  been  previously  acted  on  by  light.     Subsequently  to 
the  date  of  this  patent  the  collodion  process  was  discovered, 
and  the  defendant  having  practised  it,  the  plaintiff  brought 
this  action,  alleging  that  this  process  was  an  illegal  copy 
of  his  process.     It  was  argued  by  the  defendant— firstly, 
that  the  plaintiff  had  claimed  only  the  rendering  of  paper 
more  sensitive  to  light ;  whereas  collodion,  the  substance 
he  employed,  was  a  different  thing,  being  a  solution  of 
gun-cotton   in  ether ;    secondly,  that  when  the  collodion 
was   put   into  the  camera  it  contained  no  gallic  acid,  a 
material  essential  to  the  plaintiff's  process  ;  thirdly,  that 
in  developing  the  image  he  employed  pyrogallic  acid,  and 
not  gallic  acid.     Several  scientific  persons  gave  evidence 
that  collodion  was  not  only  a  different  material  from  paper, 
calling  into  play  processes  not  needed  when  paper  was 
employed,   but   that   it   possessed    peculiar    photographic 
properties,  as  was  proved  by  the  fact  that  gallic  acid  was 


156 


I R  t  RIllOKMKIITo 


not  required  t<>  n  -n.lt  r  it  sensitive,  as  in  the  caae  of  paper; 
also,  that  pyin^iillir  acid  wan  much  more  rapid  in  its  action 
than  gallic  acid,  and  that  it  was,  in  many  respects,  a  <lif- 
f.  !-.  nt  tiling  from  gallic  acid.  The  questions  submitted  by 
the  judge  to  the  jury  upon  this  part  of  the  case  were  these: 
Is  the  use  of  collodion  with  nit  rat.  <>f  silver  and  iodide  of 
potassium  the  same  as  the  use  of  paper  prepared  with 
nitrate  of  silver,  iodide  of  potassium,  and  gallic  acid  ?  Is 
pyrogallic  acid  the  same  as,  or  a  chemical  equivalent  for, 
gallo-nitrate  of  silver  ?  The  jury  returned  a  verdict  imply- 
ing that,  in  practising  the  collodion  process,  the  defendant 
had  not  infringed  the  plaintiff's  process. 

The  difficulty  that  sometimes  exists  in  determining 
whether  one  chemical  process  is,  in  contemplation  of  law, 
distinct  from,  or  an  illegal  copy  of,  another  is  exemplified 
in  the  history  of  the  case  of  Heath  v.  Umrin. 

Under  a  patent  for  improvements  in  the  manufacture 
of  iron  and  steel,  the  patentee  claimed  '  the  use  of  carburet 
of  manganese  in  any  process  whereby  iron  is  converted 
into  cast  steel ; '  and  his  specification  stated  that  the  in- 
vention consisted  in  adding  from  one  to  three  per  cent,  of 
the  carburet  to  iron  or  blistered  steel  whilst  in  the  crucible. 
The  carburet  of  manganese  was  separately  prepared,  by 
subjecting  oxide  of  manganese  and  carbonaceous  matter  to 
a  strong  heat,  and  the  resulting  carburet  was  then  added 
to  the  crucible  containing  the  metal  to  be  converted  into 
cast  steel.  Upon  the  trial  of  an  action  for  an  infringement, 
it  appeared  that  the  defendant  did  not  use  any  single  sub- 
stance answering  to  the  description  of  carburet  of  manga- 
nese ;  but  he  placed  in  the  crucible  containing  the  iron  or 
blistered  steel  some  oxide  of  manganese  and  carbonaceous 
matter.  These  two  substances  would  form  during  the 
process  of  conversion,  and  before  actual  union  with  the 
melted  iron,  carburet  of  manganese  in  a  state  of  fusion ; 
but  the  quantity  of  the  carburet  so  formed  was  less  than 
one  per  cent,  of  the  weight  of  iron  in  the  crucible.  It  was 
held  by  the  Court  of  Exchequer,  that  since  the  defendant 
had  not  contemplated  the  use  of  carburet  of  manganese, 


INFRINGEMENTS  257 

and  had  not  known  prior  to  the  investigation  that  took 
place  in  consequence  of  the  action  that  the  result  of  his 
adding  the  oxide  and  carbon  was  to  produce  the  carburet 
— since,  moreover,  the  patentee  had  expressly  stated  his 
invention  to  be  the  addition  of  the  substance  called  carburet 
of  manganese  to  the  crucible,  there  was  no  infringement 
on  the  part  of  the  defendant,  for  there  was  no  imitation  of 
the  patentee's  process  behind  a  colourable  variation.  The 
specification  was  construed  as  claiming  the  use  of  one 
particular  combination  of  carbon  and  manganese — namely, 
the  carburet  of  that  metal ;  and  a  particular  mode  of  using 
that  combination — namely,  by  putting  a  certain  quantity 
by  weight,  in  an  unmelted  state,  into  the  crucible. 

Heath  v.  Unwin  subsequently  went  before  the  Court  of 
Exchequer  Chamber.  A  majority  of  the  judges  of  that 
Court  held  that,  inasmuch  as  the  plaintiff  had  not  limited 
his  claim  to  the  particular  mode  of  using  the  carburet 
described  in  his  specification,  the  defendant's  process  was 
an  infringement  of  the  patented  invention,  since  it  effected 
the  manufacture  of  cast  steel  by  the  employment  of  either 
carburet  of  manganese  or  a  chemical  equivalent.  A  minority 
of  the  judges  thought  that  the  defendant  had  not  infringed 
the  patent :  for,  though  he  had  used  a  chemical  equivalent 
for  the  carburet  of  manganese — viz.  its  component  parts — 
it  was  not  known  at  the  date  of  the  patent  that  such  com- 
ponent parts  were  equivalent  to  the  carburet,  in  such 
special  applications  of  it  as  were  described  in  the  specifica- 
tion, and  for  the  purpose  there  mentioned.  Moreover, 
they  thought  that  the  defendant's  process  was  an  improve- 
ment upon  the  plaintiff's,  for  the  same  quality  of  steel  was 
made  at  less  expense,  one  crucible  and  one  heating  effect- 
ing the  desired  result. 

When  this  extraordinary  case  came  before  the  House 
of  Lords,  the  judges  were  called  upon  to  attend  the  argu- 
ment, and  give  their  opinions.  Eleven  judges  attended, 
seven  of  whom  concurred  with  the  Court  of  Exchequer 
Chamber,  and  four  disagreed.  Notwithstanding  this  large 
majority,  the  two  law  lords  who  heard  the  case  (Lord 

s 


258 

Cramrnrth  and   /  gave  judgment  for  the 

plaintitT  in  •  IT. .r,  th«  ivl.v  ii.ri.iiii.-  th:tt  Heath's  patent  had 
not  been  infringed.     •  1  think.'  sni.l  / 
the  use  of  substances  thus  producing  carburet  of  manganese 
in  a  state  of  fusion  was  no  violation  of  the  patent.     The 
substance  for  the  use  of  which  (int.  /  <ili<i)  the  patent  was 
granted  was  a  solid  metallic  substance  capable  of  being 
broken  into  fragments  and  weighed,  so  that  certain  definite 
quantities  might  be  put  into  the  crucible  with  the  steel. 
There  is  no  evidence  whatever  tending  to  prove  that,  at 
the  date  of  the  patent,  it  was  known  to  persons  acquainted 
with  the  subject  of  manufacturing  steel,  that  coal-tar  and 
oxide  of  manganese  would  be  a  chemical  equivalent  for  the 
carburet  of  manganese  claimed  by  Heath.     Indeed,  it  is 
obvious  that  the  discovery  of  such  an  equivalent  was  made 
after  the  use  of  the  carburet  as  a  distinct  metallic  substance 
had  been  some  short  time  in  operation.     It  was  itself  a 
most  valuable    discovery,   and   would    have    legitimately 
formed  the  subject  of  a  new  patent.     The  costly  nature  of 
the  substance  claimed  in  the  patent  might,  and  probably 
would,  have  prevented  its  use  altogether;  and  if,  at  the 
date  of  the  specification,  it  was  known  to  Heath  tha 
the  use  of  two  common  substances,  well  known  in  commerce, 
more  than  one  hundredfold  cheaper  than  carburet  of  man- 
ganese, the  same  results  precisely  would  he  obtained  as  by 
the  use  of  that  material,  the  specification  would  have  been 
bad,  as  not  truly  disclosing  the  invention.     On  the  short 
ground,  therefore,  that  the  invention  claimed  is  for  the  use 
of  a  particular  metallic  substance,  viz.  carburet  of  manga- 
nese in  certain  definite  proportions,  according  to  the  weight 
of  the  steel  under  fusion,  and  that  no  such  substance,  nor 
any  equivalent  for  it,  known  to  be  such  at  the  date  of  the 
specification,  was  used  by  the  defendant,  I  think  that  there 
was  no  evidence  of  infringement.'  (5  H.  L.  C.  505,  548.) 
See  also  Mr.  Justice  Pearson's  judgment  in  The  Hadische 
Anilin  und  Soda  Fabrik  \.  Lerinstein  (2  B.  P.  C.  70). 

On  the  trial  of  Munte  v.  Foster  (2  W.  P.  C.  96),  an 
action  brought  for  the  infringement  of  a  patent  for  an 


INFRINGEMENTS  259 

improved  manufacture  of  metal  plates  for  sheathing   the 
bottoms  of  ships,  it  appeared  that  the  patentee  claimed 
the  invention  of  an  alloy  of  60  per  cent,  of  copper  and  40 
per  cent,  of  zinc — the  copper  and  zinc  being  of  the  best 
quality — which  alloy  could   be  rolled  at  a  red  heat   into 
sheets  that  furnished  a  sheathing  for  ships  which  was  more 
durable,  under   the  corrosive  action  of  salt  water,  than 
copper  sheathing;  whilst   it  oxidated  sufficiently  to  keep 
the  ship's  bottom  clean  from  barnacles  and  other  things 
that   impeded  the  ship's  progress.      A  patent   had   been 
obtained   in    1800,  by  one   Collins,  for   a  preparation   of 
sundry  materials,  to  be  used  chiefly  for  the  preservation  of 
shipping  or  for  marine  purposes,  the  specification  of  which 
described,  amongst  other  things,  a  mixture  of  100  parts 
copper  and  80  parts  zinc — i.e.  55|  per  cent,  of  copper  and 
44|  per  cent,  of  zinc — which  was  to  be  extended  into  proper 
form  by  rolling.    The  two  inventions,  on  their  faces,  seemed 
to  be  substantially  the  same,  but  the  following  arguments 
were  used  to  prove  a  difference.     Collins  stated  that  other 
metallic  substances  might  be  added  to  the  alloy  of  copper 
and  zinc ;  whereas  Muntz  alleged  that  foreign  ingredients 
would    destroy   the   value   of    his    composition.      Collins 
stated  that  a  good  composition  might  be  made  of  55|  per 
cent,   of    copper   and   44£    per    cent,   of    zinc ;    whereas 
Muntz  alleged  that  60  per  cent,  of  copper  and  40  per  cent, 
of  zinc  were  the  precise  proportions  required  to  produce 
the  best  metal  for  sheathing,  and  that  a  variation  of  one  or 
two  parts  of  copper  or  zinc,  on  one  side  or  the  other,  made 
a  very  material  difference  in  the  result.     Again,  it  was 
alleged  on  the  part  of  Muntz  that,  at  the  time  of  Collins' 
invention,  neither  copper  nor  zinc  existed  of  the  purity 
required  for  the  successful  production  of  an  alloy  as  suit- 
able as  Muntz's  for  ship- sheathing ;  and  that  before  his 
invention  it  was  not  possible  to  obtain  a  metal  which  would 
roll  hot  or  cold,  and   could  at  the  same  time  serve  for 
sheathing.      The   defendants  alleged    that   the   sheathing 
made  by  them  was  the  result  of  following  the  directions  of 
Collins'  specification.    (As  to  this  part  of  the  case,  however, 

»  2 


2GO 


Lord  LitmUinrst,  on  tin-  hearing  of  an  appeal  from  an  order 
of  Knt>ilit  />'/'  '  ,  I  '.  (  '.,  -aid  he  was  satisfied  that  the  object 
could  not  be  accomplished  by  uniting  ordinary  copper  and 
according  to  Collins'  process.  The  defendants  must, 
therefore,  have  originally  used,  not  the  ordinary,  but  tin 
purest  quality  of  the  two  metals,  or  they  must  have  puri- 
fied them  in  the  course  of  the  process  by  some  mode  not 
suggested  in  Collins'  specification.  In  one  case  the  invasion 
of  Muntz's  invention  was  plain  and  direct  ;  in  the  other  it 
was  colourable  and  indirect.)  Furthermore,  witnesses 
stated  that  no  person  could  make  the  compound  mat 
by  following  Collins'  directions.  The  jury  found  a  verdict 
for  the  plaintiff,  the  judge  having  taken  a  favourable  view 
of  Munt/'s  case  in  his  address  to  the  jury. 

A  man  may  invent  improvements  on  a  patented  chemical 
process,  by  which  improvements  he  may  produce  a  l»> 
result  in  a  simpler  manner  at  less  cost  and  with  less 
waste,  but,  if  these  are  effected  by  equivalent  operations 
known  to  be  equivalent  at  the  date  of  the  patent,  he  will  be 
deemed  an  infringer  if  he  puts  them  in  practice.  Thus,  in 
the  case  of  the  liadische  Anilin  und  S<»l<i  /•'<///  /•//.•  v.  / 
*t,-in  (2  R.  P.  C.  81  ;  affirmed  by  H.  of  L.,  4  R.  P.  C.  459), 
an  action  brought  for  the  infringement  of  a  chemical  patent, 
Mr.  Jnxiif-  Pearson  said  :  '  The  processes  employed  by  tin- 
defendant  are  processes  deserving  of  great  praise,  but  they 
are  simply  processes  which  produce  exactly  the  same  results 
from  the  same  materials  which  are  produced  under  t  In- 
patent.  The  same  object  is  pursued,  the  same  materials 
are  employed,  the  same  result  is  obtained.  I  cannot  do 
otherwise  than  come  to  the  conclusion  that  these  pro- 
cesses are  not  an  invention  differing  from  the  patent-  d 
one.' 

In  those  cases  where  the  invention  consists  of  the  em- 
ployment of  a  material  composed  of  several  ingredients, 
and  the  inventor  has  stated  the  most  suitable  proportions 
known  to  him,  another  person  will  not  be  allowed  to  evade 
the  patent  by  employing  somewhat  different  proportions. 
(Patent  Type  Founding  Company  v.  Richard,  Johns.  881.) 


INFRINGEMENTS  2G1 

DEALING   IN   ARTICLES    MADE    BY   INFRINGING   A   PATENT. 

The  sale  by  a  dealer  of  articles  made  in  infringement 
of  a  patent  is  itself  an  infringement,  and  it  is  not  neces- 
sary for  the  patentee  to  prove  that  the  dealer  was  aware 
of  the  articles  having  been  surreptitiously  made  by  a 
patented  process.  (Wright  v.  Hitchcock,  5  Ex.  37  ;  Daven- 
port v.  llylands,  L.  E.  1  Eq.  303.)  And  this  is  so  whether 
such  articles  have  been  made  in  this  country  or  have  been 
imported  from  abroad.  (Walton  v.  La-rater,  8  C.  B.  N.  s.  162 ; 
Elmslic  v.  Boursier,  L.  E.  9  Eq.  217  ;  Von  Heyden  v. 
Neustadt,  L.  E.  14  Ch.  D.  230;  Burnett  v.  Tate,  Q.B., 
April  27,  1883 ;  Societe  Anonyme  v.  Tilghman's  Company, 
L.  E.  25  Ch.  D.  1  ;  United  Telephone  Company  v.  Sharpies, 
2  E.  P.  C.  31.)  This  will  be  so  even  where  the  persons 
importing  the  patented  articles  are  the  licensees  under  a 
foreign  patent  obtained  by  the  same  inventor  for  the  same 
invention  as  that  secured  by  the  British  patent.  (See  the 
two  last  cited  cases.) 

After  the  plaintiff  has  given  primd-facie  evidence  of 
infringement  by  proving  that  the  patented  article  was  sold 
by  the  defendant,  he  is  not  bound  in  ordinary  cases  to  go 
on  to  prove  that  it  was  not  obtained  from  himself,  or  from 
persons  to  whom  he  had  sold  it,  or  from  his  licensees. 
(Badische  Anilin  und  Soda  Fabrik  v.  Dawson,  6  E.  P.  C. 
395.)  The  circumstances,  however,  may  be  such  that  the 
patentee  is  bound  to  prove  not  only  the  sale,  but  that 
the  article  was  not  made  and  sold  by  himself  or  his  agents. 
(Betts  v.  Willmott,  L.  E.  6  Ch.  239.)  In  this  case,  a 
patentee  having  manufactories  both  in  England  and  on 
the  Continent  filed  a  bill  against  a  druggist  to  restrain 
him  from  infringing  his  patent  for  metallic  capsules,  the 
infringement  consisting  of  the  sale  of  a  bottle  of  French 
toilet  vinegar  having  a  capsule  attached  similar  to  those 
manufactured  under  the  patent,  but  the  bill  was  dismissed 
(and  on  appeal  Lord  Hatherlcy,  C.,  upheld  the  Vice- Chan- 
cellor's decision)  on  the  ground  that  the  plaintiff  had  not 
shown  that  he  had  not  himself  sold  through  his  house  in 


262  :IXOEMKNTS 

Paris  the  very  article  the  use  of  which  he  sought  to  pro- 
hibit. A  sale  of  the  m  ti<  l,  l.\  the  patentee  in  one  country 
would  imply  a  ri-ht  to  use  it  in  another.  (See  observnti  M 
of  <',.tti>n,  I..  ./.,  on  this  case  in  Anonym 

•ni'ilim.i'.'       .  <  .  I.,  l:.  U  <  i'.  I».  1.) 

Proof  of  the  sale  of  an  article  shown  to  have  been 
made  in  tin-  same  way  as  that  for  which  a  patent  has  been 
obtained,  such  sale  lx  in^  without  the  leave-,  expressed  or 
implied,  of  tin-  patentee,  is  print"  i«l«  nee  of  an  in- 

fringement, lirnml,  1  \V.  1'.  C.  630.)    But  there 

must  be  proof  that  the  article  was  made  according  to  the 
patented  method.  Thus,  on  the  trial  of  an  action  for  an 
infringement,  a  candle  with  a  plaited  wick,  made  by  the 
defendant  and  sold  at  his  manufactory,  was  produced  to 
the  jury  as  evidence  that  he  had  infringed  the  patent.  It 
held  that,  as  the  patent  was  not  for  the  candle  itself, 
but  for  the  mode  of  manufacturing  it,  the  mere  production 
of  a  candle  similar  to  the  plaintiffs  was  no  evidence  that 
it  had  been  made  by  his  patented  method.  It  should  have 
been  shown  how  the  candle  had  been  made,  seeing  that  it 
was  quite  possible  the  same  result  had  been  produced  by 
a  different  method.  (Palmar  v.  in///xf///,  8  Exch.  840;  9 
Exch.  494.) 

But  in  JlMtrt  v.  f /riWmir  (1  W.  P.  C.  91),  it  was 
held  that  the   production  of   pieces  of  rope  having  the 
essential  qualities  of  the  patented  article  was  primn 
evidence  of  infringement.    And  in  Hall  v.  B<x>t  (1  W.  P.  C. 
186),  it  was  held  that  the  sale  of  an  nrticlo,  which  might 
during  manufacture  have  been  improved  according  to  a 
patented  process,  coupled  with  the  fact  of  the  necessary 
machine  l>eing  in  the  defendant's  possession,  was  sufficient 
evidence  of  infringement.    (See8.\sol><ir<n]»>rt\.IlicI, 
3  L.  T.  N.  s.  504.) 

The  point  whether  a  mere  exposure  or  offering  for  sale 
of  a  patented  article  amounts  to  an  infringement,  in  the 
absence  of  proof  of  actual  sale,  seems  to  have  been  decided 
differently  in  the  cases  of  Mintcr  v.  William*  (1  \V.  P.  G. 
137)  and  Oxlty  v.  HM*n  (5  C.  B.  v.  s.  667).  In  Muntz  v. 


INFRINGEMENTS  263 

Foster  (2  Web.  P.  C.  101),  Titidal,  C.  J.,  held  that  the 
making  of  ten  tons  of  metal  sheathing  was  an  infringe- 
ment, although  no  sale  was  proved. 

In  Spcckhart  v.  Campbell  ('Times,'  March  13,  1884), 
it  was  held  by  the  Court  of  Appeal  that  the  defendant,  who 
was  domiciled  in  Scotland,  had  committed  an  infringement 
in  England  of  the  plaintiff's  patent  by  buying  in  London 
articles  made  in  infringement  of  the  patent,  and  advertis- 
ing them  for  sale  in  Scotland  ;  and  by  sending  to  a  Liver- 
pool firm,  in  exchange  for  postage  stamps,  samples  of  the 
article,  accompanied  by  a  letter  stating  the  price  per  gross. 

INFRINGEMENT    BY    USER. 

A  patentee  may  not  only  obtain  compensation  from  a 
manufacturer  who  infringes  his  patent,  but  he  may  pursue 
the  infringing  articles  into  the  hands  of  other  persons  and 
recover  damages  in  respect  of  them  without  regard  to  what 
he  recovered  from  the  manufacturer.  (Penn  v.  Bibby, 
L.  E.  3  Eq.  308 ;  United  Telephone  Company  v.  Walker, 
4  E.  P.  C.  67.) 

The  user  in  this  country  of  an  article  made  abroad,  but 
which  is  the  subject  of  a  British  patent,  is  illegal,  even 
when  such  user  is  merely  of  a  passive  nature,  and  takes 
place  in  the  course  of  transit  from  one  foreign  country 
where  the  articles  have  been  made  to  another  to  which 
they  are  consigned.  (Betts  v.  Neilson,  6  N.  E.  221,  affirmed 
on  appeal,  ibid.  361;  3  De  G.  J.  &  D.  82;  L.  E.  3  Ch.  431  ; 
L.  E.  5  H.  L.  1.)  In  this  case  bottles  of  beer  sent  from 
Scotland  protected  by  capsules  made  in  contravention  of 
an  English  patent  were  transshipped  in  an  English  port  for 
convenience  of  exportation  to  India.  It  wras  held,  first  by 
Wood,  V.  C'.,  and  afterwards  by  the  Court  of  Appeal  and 
the  House  of  Lords,  that,  as  the  capsules  were  necessary 
for  the  preservation  of  the  beer,  there  had  been  a  user  of 
the  invention  in  England,  and  an  injunction  was  granted. 
But  his  Honour  said  he  could  well  conceive  a  case  in  which 
there  would  be  no  user  in  England,  as,  for  instance,  foreign 
tools  infringing  an  English  patent,  packed  up  in  boxes  and 


N4 

lying   inert.  <>r   tntns*hippcd    in   coarse  of  transit   in   an 
ish  harbour.    (6N.  B.ttl       1  -.  \  /      !-tirriCo. 

\.Jone*  (L.  R.  17  Ch.  I>.  i'71  .  \\ii.-r.-  the  object  of  a  pa 
in  regard  to  a  preparation  of  nitro-glycerine  was  to  render 
it  non-explosivt  with  a  vi<  \v  to  its  safe  conveyance  from 
place  to  place,  it  was  held  l»y  I  .  C.  />•/<•<•//  tlmt  tin-  trans- 
shipment  in  an  English  port  of  a  quantity  of  nitroglycerine 
ired  abroad  according  to  th<  British  patent  was  a  user 
of  the  invention  and  an  infringement  of  the  patent.  The 
V.  C.'s  decision  was  reversed  by  the  H.  of  L.,  but  on 
another  ground,  stated  below.  See  also  CaUmil  v.  Vnn 
VliMtnyrn  (9  Hare,  415,  428),  where  the  user  was  an 
active  use. 

But  the  doctrine  of  liettt  v.  XciUon  will  not  be  extended 
so  as  to  allow  an  injunction  to  issue  against  persons  who 
merely  act  as  Custom  House  agents  for  the  importers  of 
the  patented  articles.  (Xobd's  Explosives  ('<>.  v.  Jonct, 
L.  R.  17  Ch.  D.  721,  affirmed  in  H.  L.  8  App.  Cas.  5.) 

A  user  of  infringing  articles  by  the  pupils  of  the 
purchaser  of  the  articles  renders  him  liable  for  an  infringe- 
ment. (I'nited  Tfb-ph^m-  ('OIHJHIHI,  v.  Sli<ir]i!>  *.  li  I;.  1'.  ('. 
28.) 

The  possession  of  articles  made  in  infringement  of  a 
patent  is  sometimes  enough  to  afford  ground  for  an  injunc- 
tion without  proving  user,  if  the  circumstances  are  such  as 
to  show  that  user  is  intended.  An  injunction  was  granted 
by  I'.  ('.  r><n-«n  against  the  master  of  a  ship,  restraining 
him  from  using  certain  pumps  constructed  according  to  the 
plaintiffs  patented  invention  and  placed  on  board  the 
vessel.  The  validity  of  the  patent  and  the  fact  of  infringe- 
ment by  the  manufacturers  of  the  pumps  were  established, 
but  actual  user  of  the  pumps  was  not  proved.  The  master, 
however,  acted  with  the  makers  in  asserting  his  right  to 
use  the  pumps  as  against  the  patentee.  It  was  held  on 
appeal  that  the  injunction  was  properly  granted.  ( .\<lnr  v. 
,  L.  R.  12  Ch.  D.  18.)  And  see  United  T.l-plmnr 
v.  Lnnil"ii  tv  <il>l>  T>  I  plume  Company  (L.  R.  26 
Ch.  D.  766 ;  1  R.  P.  C.  117). 


INFRINGEMENTS  265 

But  where  the  user  of  the  infringing  machines,  which 
still  remained  in  the  possession  of  the  defendants,  who 
admitted  the  validity  of  the  patent,  took  place  only  for  a 
short  time,  four  years  before  the  action  was  brought,  and 
there  was  no  evidence  of  an  intention  to  repeat  the  in- 
fringement, it  was  held  that  an  injunction  ought  to  be 
refused.  (Proctor  v.  Bennis,  C.  of  Appeal,  6  B.  P.  C.  538.) 

On  the  general  question  of  infringement  by  user  see 
The  Universities  of  Oxford  and  Cambridge  v.  Richardson 
(6  Ves.  689) ;  Minter  v.  Williams  (1  W.  P.  C.  137). 


Where  an  infringement  is  committed  through  an  agent 
both  employer  and  agent  are  liable  ;  it  being  no  justifica- 
tion for  the  agent  to  allege  that  he  did  the  acts  complained 
of  by  the  order  of  his  principal.  (Gibson  v.  Brand,  4  M.  & 
G.  179  ;  Betts  v.  De  Vitre,  11  Jur.  N.  s.  9 ;  Sykes  v.  Hoivarth, 
L.  E.  12  Ch.  D.  833 ;  Spencer  v.  Ancoats  Vale  Rubber  Co., 
6  E.  P.  C.  46.) 

CARRIERS. 

Steamship  carriers  may  be  restrained  by  interim  in- 
junction from  importing  or  exporting  goods  alleged  to  have 
been  made  in  infringement  of  a  patent  and  from  parting 
with  the  possession  of  them,  when  the  validity  of  the 
patent  has  been  proved  in  an  action  against  another  person. 
In  these  cases  the  goods  had  been  manufactured  abroad  and 
there  had  been  no  user,  passive  or  otherwise,  of  the  goods 
on  board  the  ships.  (Wasliburn,  &c.,  Co.  v.  Canard  Co.  and 
Washburn,  d-c.,  Co.  v.  Dublin  and  Liverpool,  dec.,  Co.  6  E.  P. 
C.  398.) 

FOREIGN  VESSELS. 

By  the  forty-third "  section  subs.  (1)  of  the  Patents  Act 
of  1883,  the  use  of  an  invention  for  the  purposes  of  the 
navigation  of  a  foreign  vessel  within  the  jurisdiction  of  Her 
Majesty's  Courts  in  the  United  Kingdom  or  Isle  of  Man,  or 
the  use  of  an  invention  in  a  foreign  vessel  within  that 
jurisdiction,  shall  not  be  deemed  an  infringement  of  any 


266  IKFRIXOEME5T8 

-h  patent  obtained  for  such  invention,  unless  it  in  used 
for  the  manufacture  or  preparation  of  something  intended 
to  be  sold  in  or  exported  from  the  United  Kingdom  or  Isle 
of  Man.  But  by  subs.  (2)  the  first  subsection  is  not  to 
extend  to  vessels  of  any  foreign  state  which  does  not  show 
similar  indulgence  to  British  vessels  under  like  circum- 
htanrrs. 

Any  case  not  coming  under  the  protection  afforded  by 
the  first  subsection  will  be  governed  by  the  decision  in 
C.iUn-.U  v.  I'tin  1 7iW/f//r-n  (9  Hare,  415),  where  an  injunc- 
tion was  obtained  to  restrain  the  use  on  board  of  a  Dutch 
Teasel  within  British  \vat< -rs  of  certain  propelling  apparatus 
made  according  to  a  British  patent. 

THE   CROWN. 

It  was  decided  in  the  case  of  Feather  \.  77  (6  B. 

&  8.  257)  that,  as  all  grants  made  by  the  Crown  must  be 
construed  favourably  to  the  grantor  and  adversely  to  the 
grantee,  there  was  nothing  in  the  ordinary  form  of  Letters 
Patent  in  use"  up  to  January  1,  1884,  to  debar  the  Crown 
from  using  the  invention  comprised  therein,  and  conse- 
quently that  the  Crown  had  a  right,  either  by  itself  or  by 
its  officers,  agents,  or  servants,  to  exercise  such  invention 
and  manufacture  the  patented  object  without  paying 
royalties  or  compensation. 

However,  in  Dixon  v.  Tin'  London  S»i<tll  Anna  CoiiijHiny 
(L.  B.  1  App.  Ca.  632),  where  a  manufacturing  company 
had  entered  into  a  contract  with  the  Government  for  the 
supply  of  a  patented  article  for  the  public  service  at  a  fixed 
price,  and  in  pursuance  thereof  had  manufactured  the 
article  without  the  patentee's  licence,  and  delivered  the 
same  and  received  payment,  it  waa  held  by  the  House  of 
Lords  that  the  manufacturers  were  not  in  the  position  of 
servants  or  agents  of  the  Crown,  although  they  had  received 
an  indemnity  from  the  Government  against  the  claims  of 
the  patentee ;  and,  therefore,  that  they  were  not  entitled  to 
the  privilege  of  the  Crown  against  a  patentee,  but  were  liable 


INFRINGEMENTS  267 

to  an  action  for  an  infringement  of  the  patent.     See  also 
Vavasseur  v.  Krupp  (L.  B.  9  Ch.  D.  351). 

The  case  of  Feather  v.  The  Queen  \vill  still  apply  to 
patents  granted  before  the  commencement  of  the  Patents 
Act  of  1883  or  on  applications  then  pending  (sect.  45),  but 
by  the  twenty-seventh  section  of  that  Act  a  patent  granted 
on  an  application  made  after  the  commencement  of  that 
Act  shall  have  to  all  intents  the  like  effect  as  against  Her 
Majesty  the  Queen,  her  heirs  and  successors,  as  it  has 
against  a  subject.  But  the  officers  or  authorities  admin- 
istering any  department  of  the  service  of  the  Crown  may, 
by  themselves,  their  agents,  contractors,  or  others,  at  any 
time  after  the  application,  use  the  invention  for  the  services 
of  the  Crown  on  terms  to  be  before  or  after  the  use  thereof 
agreed  on,  with  the  approval  of  the  Treasury,  between 
those  officers  or  authorities  and  the  patentee,  or,  in  default 
of  such  agreement,  on  such  terms  as  may  be  settled  by  the 
Treasury  after  hearing  all  parties  interested. 


CASES    OF   NON-INFRINGEMENT. 


It  has  been  sufficiently  shown  on  previous  pages  that 
when  a  patentee  is  limited  to  the  particular  combination 
described  in  his  specification  another  person  may  lawfully 
effect  the  same  object  by  employing  different  means.  In 
such  cases  another  method  of  attaining  the  same  end  is 
not  an  infringement. 

To  construct  a  patented  machine  simply  as  an  amuse- 
ment or  as  a  model  is  not  an  infringement  of  the  patent 
(Jones  v.  Pearce,  1  W.  P.  C.  125) ;  nor  is  the  making  of 
the  patented  article  for  the  purpose  of  bond-fide  experiment 
(Frearson  v.  Loe,  L.  E.  9  Ch.  D.  48) ;  and  if  a  person 
makes  use  of  a  patented  process  and  obtains  the  product, 
not  for  the  purpose  of  commercial  profit,  he  is  not  guilty 
of  infringing  the  patent.  Thus  Higgs  obtained  a  patent 
for  a  process  of  precipitating,  by  means  of  hydrate  of  lime, 
the  animal  and  vegetable  matters  suspended  in  sewage 
water,  with  a  view  to  their  use  as  manures.  Goodwin 
employed  the  same  process,  but  solely  for  the  purpose  of 


UINGEMEKT3 

purifying  the  sewage  water,  an.  1  In-  <!•  riv.  .1  no  profit  from 
th«-  product.    It  was  held  tiiat  the  patent  was  not  infringed. 

:'..  B.  &  I 
It  has  been  decided  that  the  ai>]>lir;iti<>n  of  a  new  and 

rial  part  of  an  arrangement  to  a  purpose 
from  that  to  which  it  is  applied  in  the  patented  combina- 
tion does  not  infringe  the  patent.     (/,!*/• 
L.  T.  N.  8.  766  ;  Mc('»ni..  7  II.  &   N     J 

ton   V.   ]'<iu<h.  r,  (\  Kxrli.  Kep.  K.V.I  ;    /•'/.  GUuffOU    ' 

<\ninni**wnrr*   I   I:.  I'.  (  .  I 

In  AV/rrt//  v.  Kllintt  (10  Jur.  N.  s.  9."  I  :  >.  <'.  l:i  \V.  I:. 
11),  a  patent  for  an  invention  of  improvements  in  apparatus 
employed  in  laying  down  submarine  telegraph  cables,  which 
consisted  of  an  internal  cone  placed  in  the  eye  of  the  coil  of 
cable,  an  external  cylinder  round  the  coil,  and  rings  suspended 
over  it,  was  held  not  to  have  been  infringed  by  an  apparatus 
in  which  the  cable  was  coiled  round  a  cylinder  and  pre- 
vented from  slipping  by  means  of  a  cylinder  placed  outside, 
it  being  found  that  this  had  been  done  before  for  the  purpose 
of  safe  carriage,  and  there  being  no  evidence  that  the 
defendants  used  their  apparatus  for  any  other  purpose. 

The  mere  publication  of  a  specification  is  not  an  in- 
fringement of  a  prior  patent.  It  is  the  use  of  the  earlier 
invention  that  constitutes  the  infringement.  '  Where  the 
invention  is  the  mode  of  working  or  the  mode  of  manu- 
facturing an  engine,  there  is  no  infringement  until  another 
engine  is  worked  or  made  in  the  same  way.  Upon  the 
question  of  infringement,  the  specification  of  the  defendant 
(the  alleged  infringer)  is  of  very  little  importance.'  Per 
L.  J.  Brett,  in  Ott»  v.  Lin  ford  (46  L.  T.  N.  s.  35). 

The  application  of  a  natural  mineral  substance  to  effect 
a  given  purpose  is  not  an  infringement  of  a  patent  obtained 
for  the  application  to  the  same  purpose  of  an  artificial 
substance  having  the  same  chemical  constitution.  A  patent 
was  obtained  for  a  process  of  purifying  coal  gas  by  means 
of  hydrated  oxide  of  iron,  and  the  method  of  obtaining 
that  material  artificially  was  described  in  the  specification. 
The  use  for  the  same  purpose  of  a  natural  substance  called 


INFRINGEMENTS  269 

bog  ochre,  containing  oxide  of  iron,  was  held  not  to  be  an 
infringement  of  the  patent.  The  specification  also  described 
and  claimed  a  mode  of  revivifying  the  artificial  oxide  for 
subsequent  use  in  the  same  way.  Lord  Westbury,  C., 
granted  an  injunction  to  restrain  the  user  of  the  natural 
substance  after  it  had  been  revivified  by  the  process  de- 
scribed in  the  patent.  (Hills  v.  Liverpool  Gas  Light 
Company,  9  Jur.  N.  s.  140.) 

It  is  not  an  infringement  of  a  patent  to  sell  chemical 
substances,  knowing  that  the  buyer  intends  to  use  them  in 
infringing  the  patent.  Nor  is  it  an  infringement  for  the 
seller,  in  consideration  of  the  purchase,  to  indemnify  the 
buyer  against  proceedings  by  the  patentee,  if  the  patent  is 
disputed  or  likely  to  be  so.  If  buyer  and  seller  know  the 
patent  to  be  valid,  an  agreement  for  indemnity  would  be 
void  as  being  against  public  policy,  and  the  seller  would 
not  be  guilty  of  infringement.  (Toicnsend  v.  Haworth, 
L.  E.  12  Ch.  D.  826  n.,  affirmed  by  the  Court  of  Appeal. 
Appendix  to  Higgins's  Digest  of  P.  C.,  1880,  p.  60.  And 
see  Sykcs  v.  Howarth,  L.  E.  14  Ch.  D.  833.) 

A  patent  for  the  United  Kingdom  will  not  be  infringed 
by  acts  done  on  board  a  British  vessel  at  Malta  or  on  the 
high  seas.  (Newatt  v.  Elliott,  4  N.  E.  429.) 

Where  a  foreign  sovereign  had  bought  abroad  articles 
made  in  infringement  of  a  British  patent,  and  they  were 
brought  to  England  to  be  placed  on  board  a  ship  of  war 
belonging  to  the  foreign  sovereign,  it  was  held  that,  as  the 
Court  had  no  jurisdiction  to  interfere  with  the  property 
of  a  foreign  sovereign,  it  could  not  prevent  him  from 
removing  the  articles  in  question.  (Vavasseur  v.  Krupp, 
L.  E.  9  Ch.  D.  351.) 

INTENTION   OF   INFRINGER   NOT   MATERIAL. 

In  determining  the  question  of  infringement,  the  inten- 
tion of  the  infringer  is  immaterial ;  if  he  violate  the 
patentee's  rights  he  renders  himself  liable  to  make  com- 
pensation, although  he  acted  in  ignorance.  In  the  case  of 
Stead  v.  Anderson  (2  W.  P.  C.  156),  Wilde,  C.  J.,  when 


dt -livi  riii^'  the  judgment  of  tli«-  C-urt  of  Common  Pleas, 
said  that,  -in  the  action  of  ///«//<  v.  1'nn-in,  tin  ('.» 
Exeln  (|it< -r  seems  to  have  deemed  it  material  to  con 
the  intuition  of  the  defendant  in  determining  whcth* 
had   infringed  a  patent.     Hut  in  that  case  tin    .  \idence 
negatived  any  such  intention,  and  the  other  circumstances 
of  the  case  were  not  such  as  to  show  an  infringement ;  so 
that  there  was  no  evidence  as  to  what  the  effect  of 
intention  would  he,  and  we  think  it  clear  that  the  action 
is  maintainable  in  respect  of  what  the  defendant  does,  not 
what  lie  intends.'     And  Slnnitci-11.  }'.  <'.,  said,  in  II»ith  v. 
I'mrin  (15  Sim.  553) :  '  I  am  at  a  loss  to  see  how  the  want 
of  intention  can  be  any  answer  where  the  act  complained 
of  is  an  injury.     The  party  complaining  of  the  act  is  not 
the  less  prejudiced  by  it  because  it  was  committed  unin- 
tentionally, and  ray  opinion  is  that  if  a  party  has  done  an 
act  that  is  injurious  to  the  rights  of  another  (though  with- 
out any  intention  of  doinjj  him  an  injury)  he  is  answerable 
for  the  consequences.' 

In  a  subsequent  stage  of  the  case  of  Il<-,ith  v.  I'nirin,  it 
was  admitted  by  Mr.  }'»imn  /'<//•/,,•  that  the  Court  of  Ex- 
chequer had  been  in  error  when  it  took  the  intention  of 
the  alleged  infringer  into  consideration,  adding,  'There 
may  be  an  indirect  infringement  as  well  as  a  direct  one, 
though  the  intention  of  the  party  be  perfectly  innocent, 
and  even  though  he  may  not  know  of  the  existence  of  tin- 
patent  itself.'  (25  L.  J.C.  P.  19).  See  also  Wriyht  v.  Ilit,-h- 
cock  (L.  R.  5  Exch.  87);  D<ir,ni>nrt  v.  Jli/lnml*  (L.  II.  1 
Ch.  D.  803);  and  Y»uwi  ,i  .\V/7x..»  v.  RoscntJml  1 1  1!.  p.  C. 
39). 

Nor  can  a  master  of  workmen  protect  himself  by  alleging 
that  the  infringement  was  committed  by  them  against  his 
orders.  (Beits  v.  l>e  Vitrc,  8  Ch.  D.  480.)  But  where  a 
retail  dealer  had,  in  ignorance  of  the  plaintiff's  rights, 
sold  to  an  agent  of  the  plaintiff  an  article  made  in  infringe- 
ment of  the  patent,  and  the  article  itself  showed  from 
whom  its  vendor  had  bought  it,  and  the  Court  was  satisfied 
that  the  infringement  was  innocent,  accidental,  and  trivial, 


INFBING  EMENT8  271 

and  not  such  as  to  have  produced  any  substantial  damage 
to  the  plaintiff,  James,  V.  C.,  dismissed  a  bill  for  an  in- 
junction. (Betts  v.  Willmott,  18  W.  E.  946.)  The  case  went 
afterwards  on  appeal  before  Lord  Hatlierley,  C.,  who 
affirmed  the  decision,  but  upon  other  grounds.  (L.  E.  6  Ch. 
239.)  See  also  Upmann  v.  Elkan  (L.  E.  12  Ch.  145). 


272  ACTIONS  FOB  INFRINGEMENTS 


CHAPTER   XVIII. 

THE    PRACTICE   IN    ACTIONS   FOR    INFRINGEMENTS. 

SINCE  the  Judicature  Acts  of  1873  and  1875  have  abolished 
the  distinction  between  the  Courts  of  Law  and  Equity, 
every  question  of  law  and  fact,  or  mixed  law  and  fact, 
arising  in  any  action  is  now  determined  wholly  in  that 
division  of  the  High  Court  of  Justice  in  which  the  action  is 
brought,  subject  to  certain  powers  of  transfer  of  the  action 
from  one  division  to  another,  and  subject  also  to  the  further 
qualification  that  trials  by  jury  cannot  be  had  before  a 
judge  of  the  Chancery  Division.  (If  'arncr  v.  Murdoch,  L.  R. 
4  Ch.  D.  750.) 

The  thirteenth  section  of  the  Act  of  1888  directs  that 
no  proceeding  shall  be  taken  in  respect  of  an  infringement 
committed  before  the  publication  of  the  complete  specifica- 
tion. And  the  fifteenth  section  provides  that  an  applicant 
shall  not  be  entitled  to  institute  any  proceedings  for 
infringement  until  a  patent  has  been  granted  to  him. 

'  A  plaintiff  is  not  bound  before  commencing  proceed- 
ings to  apply  to  the  defendant  and  ascertain  whether  he 
will  without  suit  do  what  is  required  (Upmann  v.  I'Ahiu. 
L.  R.  12  Eq.  146).  .  .  .  Nor  is  a  plaintiff  compelled  to 
rely  on  the  promise  of  the  offending  party  not  to  infringe 
again,  but  he  is  entitled  to  the  protection  of  an  injunc- 
tion ' '  (Geary  v.  Aorton,  1  De  G.  &  Sm.  9 ;  Loth  v. 
Hague,  1  W.  P.  C.  200.) 

Interlocutory  Injunctions. — It  has  always  been  the  prac- 
tice of  the  Court  of  Chancery,  when  the  plaintiff  can  make 

1  W.  N.  Lawson :  Patents  Designs  and  Trademarks  Acts,  2nd  ed.,  p.  109. 
In  this  work  will  be  found  carefully  collected  and  arranged  all  the 
bearing  on  legal  proceedings  in  patent  actions. 


ACTIONS   FOR  INFRINGEMENTS  273 

out  a  proper  case,  to  grant  an  interlocutory  injunction,  that 
is,  an  injunction  before  the  trial  of  the  action,  without  re- 
quiring the  patent  to  be  established.  '  The  principle  on 
which  the  Court  acts,'  said  Lord  Eldon,  in  Hill  v.  Thomp- 
son (3  Mer.  622),  '  in  cases  of  this  description  is  the  follow- 
ing : — Where  a  patent  has  been  granted,  and  an  exclusive 
possession  of  some  duration  under  it,  the  Court  will  inter- 
pose its  injunction,  without  putting  the  party  previously  to 
establish  the  validity  of  his  patent  by  an  action  at  law. 
But  where  the  patent  is  but  of  yesterday,  and,  upon  an 
application  being  made  for  an  injunction,  it  is  endeavoured 
to  be  shown  in  opposition  to  it  that  there  is  no  good  speci- 
fication, or  otherwise  that  the  patent  ought  not  to  have 
been  granted,  the  Court  will  not,  from  its  own  notions  re- 
specting the  matter  in  dispute,  act  upon  the  presumed 
validity  or  invalidity  of  the  patent,  without  the  right 
having  been  ascertained  by  a  previous  trial,  but  will  send 
the  patentee  to  law,  and  oblige  him  to  establish  the  validity 
of  his  patent  in  a  court  of  law,  before  it  will  grant  him  the 
benefit  of  an  injunction.'  And,  again,  in  Dudgeon  v.  Thomson 
(30  L.  T.  N.  s.  244),  Sir  George  Jessel,  M.  R.,  said,  '  The  Court 
can  grant  an  injunction  before  the  hearing  when  the  patent 
is  an  old  one,  and  the  patentee  has  been  in  long  and  undis- 
turbed enjoyment  of  it,  or  when  its  validity  has  been  esta- 
blished elsewhere,  and  the  Court  sees  no  reason  to  doubt 
the  propriety  of  the  result,  or  when  the  conduct  of  the 
defendant  is  such  as  to  enable  the  Court  to  say  that  as 
against  the  defendant  himself  there  is  no  reason  to  doubt 
the  validity  of  the  patent.'  (See  also  Renard  v.  Levinstein, 
10  L.  T.  N.  s.  94,  affirmed  on  appeal,  ibid.  p.  177;  Betts  v. 
Menzies,  3  Jur.  N.  s.  357  ;  Clark  v.  Ferguson,  5  Jur.  N.  s. 
1155  ;  Briggs  v.  Lardeur,  1  R.  P.  C,  126  ;  United  Telephone 
Co.  v.  St.  George,  3  E.  P.  C.  33.) 

When  it  can  be  shown  that  the  patentee  has  had  undis- 
turbed possession  for  many  years  the  Court  will  grant  an 
interlocutory  injunction  without  requiring  the  patent  to  be 
established,  notwithstanding  doubts  may  exist  as  to  its 
validity.  (Losh  v.  Hague,  1 W.  P.  C.  201 ;  Mantz  v.  Foster, 

T 


U74  ACTIONS  FOR  INFRINGEMENTS 

2  \V.  P.  C.  98,  95;  •*,  8  Jur.  H.  8.  : 

I  It.  P.  C.  126.)  But  in  <>i,l,  r  to  esta- 
bli>h  u  riuht  to  an  interlocutory  injunction  on  thi.*>  ground, 
tin  ]>aicntee  must  show  actual  public  user  of  the  invention 
(I'liniptmi  v.  .Vii/iW//»x..H,  L.  It.  '20  K'|.  :J7>.  unfettered  by 
the  necessity  of  obtaining  the  licence  of  any  prior  patentee, 
i  //,//<//,  v.  Mn.iill.  W.  N.  1877,  62.)  Where  the  patent  has 
been  the  subject  of  several  suits,  all  of  which  have  terminated 
in  favour  of  the  patentee,  an  interlocutory  injunction  will 
be  granted,  notwithstanding  a  fresh  fact  is  brought  forward 
tending  to  impeach  the  novelty  of  the  invention  (.V-  mill  v. 
ll'ihnn,  2  De  G.  M.  &  6.  282  ;  Uar,-i,p,,,-t  \.  ./,/.x,,/*,  4  De 
G.  F.  &  3.  440),  or  the  defendant  offers  to  keep  an  account. 
i/,'.  //.//•//  v.  /,-  r/f/xM'/i,  '2  II.  &  M.  628.)  And  the  fact  that 
the  validity  of  the  patent  has  been  established  in  Scotland 
is  sufficient  prinni-'-K  i,  evidence  to  warrant  the  granting  an 
interlocutory  injunction  in  England.  (Duilyi-mi  v.  Thou 
80  L.  T.  N.  s.  244.) 

If  the  plaintiff  has  shown  negligence  in  prosecuting  In's 
rights,  even  though  his  patent  has  been  established  against 
another  defendant,  an  interim  injunction  will  be  refused. 
!*>•»  v.  /  ,  12  Bea.  1 ;   Jim-ill  \  .  L.  R.  1 

Eq.  888.)  But  delay  in  taking  proceedings  may  be  ex- 
plained to  the  satisfaction  of  the  Court,  and  an  injunction 
granted.  (Unit«l  Til j>)t  l-'.^uitall'  '/>/»/»//••//••, -U«o- 

ciation,  5  R.  P.  C.  288.)  If  the  fact  of  infringement  is 
matter  of  doubt,  an  injunction  will  be  refused  until  after  a 
trial,  and  even  then  if  there  is  ground  for  supposing  that 
a  new  trial  will  be  obtained.  (Collard  v.  Allison.  1  My. 
is?  :  /•;/.-(•/;•/.•  T'l'-nrnpli  ('».  \.  \»tt,l'2  Coop.  C.  C.  41,  and 
the  other  cases  collected  by  the  reporter.)  In  almost  all  cases, 

1  In  this  case  Lord  Cottenliam,  C.,  said  that  the  Court  will  not  grant  an 
injunction  where  the  legal  right  is  disputed,  unless  it  is  satisfied  that  the 
legal  right  will  eventually  be  established  ;  nor  where  the  legal  right  is  disputed 
unless  satisfied  that  the  acts  complained  of  are  a  violation  of  it.  Where, 
however,  the  sole  question  is  the  validity  of  the  patent,  and  there  has  been 
exclusive  enjoyment  under  it  for  a  reasonable  time,  the  Court  will  interpose, 
by  injunction,  until  the  invalidity  has  been  established  ;  but  the  injunction 
will  be  refused  if  there  is  conflicting  evidence  as  to  the  infringement. 


ACTIONS  FOR  INFRINGEMENTS  275 

however,  the  Court  thinks  it  right,  when  it  postpones  the 
consideration  of  the  injunction,  to  order  the  defendant  to 
keep  an  account  until  the  plaintiff  has  had  an  opportunity 
of  testing  the  validity  of  his  patent.  But  if  the  interlocu- 
tory injunction  be  granted,  the  Court  always  requires  from 
the  plaintiff  an  undertaking  to  abide  by  any  order  the 
Court  may  make  as  to  damages  in  case  it  should  ultimately 
be  of  opinion  that  the  defendant  has  sustained  any  by  the 
injunction  which  the  plaintiff  ought  to  pay.  (Wakefield  v. 
Duke  of  Buccleuch,  11  Jur.  N.  s.  523;  United  Telephone  Co. 
V.  Equitable  Telephone  Association,  5  E.  P.  C.  233.) 

For  further  statements  of  the  general  principles  on 
which  the  Court  acts  in  granting  or  withholding  interlocu- 
tory injunctions,  see  Bacon  v.  Jones  (4  My.  &  Cr.  434)  ; 
Bridson  v.  Me  Alpine  (8  Bea.  229) ;  Davenport  v.  Jepson 
(4  De  G.  F.  &  J,  440) ;  Plimpton  v.  Spitter  (L.  E.  4  Ch.  D. 
286) ;  Thomson  v.  Hughes  (7  E,  P.  C.  71). 

The  Court,  however,  being  now  empowered  to  try  the 
validity  of  the  patent,  and  having  the  control  of  the  pro- 
ceedings, and  being,  consequently,  able  to  prevent  any  undue 
delay,  is  less  disposed  than  formerly  to  grant  an  interlocu- 
tory injunction,  especially  when  the  patent  is  new,  but  will 
generally  content  itself  with  giving  directions  to  insure  an 
immediate  trial  of  the  questions  at  issue  between  the 
parties,  and  order  the  motion  for  the  injunction  to  stand 
to  the  hearing  of  the  cause,  adding,  when  necessary,  a 
direction  for  the  defendant  to  keep  an  account.  The  action 
may  then  proceed  to  trial  in  the  ordinary  way.  (See  the 
remarks  of  Sir  George.  Jessel,  M.  E.,  in  Plimpton  v.  Malcolm- 
son,  L.  E.  20  Eq.  37.  See  also  Lister  v.  Norton,  1  E.  P.  C. 
114 ;  Jackson  v.  Needle,  1  E.  P.  C.  174.) 

But  in  a  case  where  the  patent  was  only  six  years  old 
(Rothwcll  v.  King,  3  E.  P.  C.  379),  and  in  another  where 
the  patent  was  only  two  years  old  (Coles  v.  Baylis,  3  E.  P.  tC. 
178),  injunctions  were  granted.  In  the  latter  case,  however, 
the  circumstances  were  very  special. 

It   is   a  rule  of  the  Court  not  to  interfere   until  the; 
patentee's  rights  have  been  actually  violated.     But  where 

T  2 


L'TT,  ACTIONS  FOR   T 

;i  <lefi-M<lant  alleges  nn   intention  nml  «-l.i  lit  to 

infringe,  tin-   Court  will   •jrant  an  injunction,  although  no 
actual  infrin^rnirnt  may  have  taken  place.   (Frcar*<>n\.  1 
I.,  i:.  -.'  ch.  l>.  i  i..  I:.  \-i  ch.  D.  18.) 

The  case  of  <  v,.x.v/, •//  v.  /  l   \\ .  I',  c.  1 !'.»)  shows 

how  far  the  Court  \\ill  ^>  in  aiding  a  paten  toe  to  repress 
infringements.  It  appear* d  that  the  •!•  i  had  been 

secretly  manufacturing  gas-meters,  which  were  copies  of 
those  protected  by  the  plaintiffs  patent,  their  object  being 
to  pour  thnii  into  the  market  as  soon  as  the  pat. m  expired. 
A  few  days  before  the  expiration  of  the  patent,  the  plaintiff, 
having  discovered  what  had  been  done,  filed  his  bill,  and 
obtained  an  injunction  to  restrain  the  using  of  the  arti<  1.  s 
so  made  even  after  the  patent  expired. 

Co iicitrri  nt  A<-t iunx  (iiiiiinxt  ficvcral  Infriii'i>rx. — When  a 
plaintiff  commences  several  actions  at  one  time  against 
separate  infringers,  the  Court  will,  on  the  application  of  the 
several  defendants,  order  the  validity  of  the  patent  and 
other  questions  common  to  all  the  cases  to  be  tried  in  one  of 
the  actions,  and  will  in  the  meantime  stay  proceedings  in 
the  other  actions ;  hut  this  order  will  not  be  made  until  til-- 
defendants have  given  full  discovery  of  the  machines  used 
by  them  and  alleged  to  be  infringements.  (/•'•»./•/////  v.  \V>l- 
2  Dr.  &  Sm.  250  ;  S.  C.  on  appeal,  10  Jur.  N.  s,  187.)' 

But  the  plaintiff  is  not  bound  by  the  result  of  the  trial 
if  it  goes  against  him,  and  he  may  proceed  against  any  of 
the  other  infringers,  unless  prevented  by  the  order  of  the 
Court. 

Issues. — It  is  open  to  either  party,  at  any  stage  of  t In- 
action, to  move  that  issues  may  be  settled,  raising  the 
various  questions  of  fact  in  the  cause.  In  a  patent  case 
the  issues  usually  are,  whether  the  invention  is  new, 
whether  it  is  useful,  whether  it  was  a  new  manufacture, 

1  It  was  said  by  Wood,  V.  C.,  in  the  case  of  Dot-ill  v.  Crate  (L.  B.  1  Eq. 
388),  that  when  the  infringers  are  very  numerous,  the  proper  course  for  a 
plaintiff  to  pursue  before  filing  separate  bills  against  the  infringers  is  to 
select  one  as  a  defendant,  and  write  to  the  others,  and  ask  if  they  object  to 
be  bound  by  the  proceedings  against  that  one,  and  have  the  case  tried  once 
for  all. 


ACTIONS  FOE  INFEINGEMENTS  277 

whether  the  patentee  was  the  true  and  first  inventor, 
whether  the  specification  is  sufficient,  and  whether  the 
defendant  has  infringed ;  but,  of  course,  these  may  be 
varied  as  circumstances  require.  Since  the  Judicature 
Acts,  however,  the  practice  appears  to  be  not  to  apply  for 
issues,  but  to  let  the  action  come  on  for  trial  generally, 
upon  the  pleadings,  particulars  of  breaches,  and  objec- 
tions. 

It  is  not  a  matter  of  course  for  the  Court  to  grant 
issues,  and  they  are  sometimes  refused.  (Davenport  v.  Gold- 
berg, 2  H.  &  M.  282 ;  Davenport  v.  Phillips,  5  N.  E.  485  ; 
Bovill  v.  Goodier,  Law  Rep.  1  Eq.  36.)  The  Court  will  at 
any  time  during  the  progress  of  a  suit  allow  the  defendant 
to  raise  a  fresh  issue  on  the  discovery  of  facts  which  could 
not  with  due  diligence  have  been  previously  discovered. 
(Holste  v.  Robertson,  L.  R.  4  Ch.  D.  9.) 

Sometimes  one  of  the  parties  in  an  action  moves  for  an 
order  that  certain  issues  of  fact  should  be  tried  before  the 
other  issues.  In  the  United  Telephone  Co.  v.  Mottishead 
(3  R.  P.  C.  213),  on  the  defendants  admitting  that  the 
plaintiff's  patent  was  valid,  the  Court  directed  the  trial  by 
itself  of  an  issue  whether  the  defendants  had  infringed. 

Inspection  of  Machines  and  Processes. — In  an  action  for 
infringement  of  a  patent,  the  Court  or  a  judge  may,  under 
the  thirtieth  section  of  the  Patents  Act  of  1883,  and  on  the 
application  of  either  party,  make  such  order  for  an  injunc- 
tion, inspection,  or  account,  and  impose  such  terms  and  give 
such  directions  respecting  the  same  and  the  proceedings 
thereon  as  the  Court  or  a  judge  may  see  fit. 

The  following  cases  were  decided  under  the  old  law  with 
reference  to  an  inspection  of  the  processes  used  or  the 
articles  made  by  the  defendant  in  alleged  violation  of  the 
rights  of  the  plaintiff :— Bo vill  v.  Moore  (2  Coop.  C.  C.  56) ; 
Brown  v.  Moore  (3  Bligh,  180) ;  Morgan  v.  Seward  (1  W.  P.  C. 
169).  In  the  case  of  The  Patent  Type  Founding  Company 
v.  Walter  (Johns.  727),  the  defendant,  a  printer,  who  used 
types  alleged  to  be  made  in  colourable  imitation  of  the  type 
patented  by  the  plaintiffs,  was  on  motion  ordered  by  Wood, 


L'TM  ACTIONS  FOB  INFRINGEMENTS 

V.  C.,  to  deliver  a  sample  of  type  to  the  plaintiffs  for  analy- 
sis, although  a  similar  nppli< -ution  had  been  refused  by  the 
Court  of  Exchequer  in  7V  />any 

:.  \\.\  N.  lii-j,.  However,  by  On l.r  1...  Kule  8, 
of  the  Supreme  Court  Rules  1H83,  the  Court  or  a  judge  is 
empowered  in  any  cause  or  matter  to  authorise  any  samples 
to  be  taken,  or  any  observation  to  be  made,  or  experiment 
to  be  tried,  which  may  seem  necessary  or  expedient  for  tin 
purpose  of  obtaining  full  information  or  evidence. 

Inspection  will   not  be  granted   unless  the  Court  is 
satisfied  that  there  is  really  a  case  to  be  tried  at  the  trial, 
and  that  inspection  is  essential  to  enable  the  plaintiff  to 
prove   his   case.       (Vi>j<j»tt   \.    .1  »<//<»-.  lw»nVa/<    7 
ConijHiHU,  91   L.  T.   N.  s.   40;  ]l,itl,-ii  v.  Kiiif-  /.   I..   I 
Eq.  90.) 

An  order  for  inspection  was  refused  when  the  evidence 
of  infringement  only  amounted  to  suspicion,  and  the 
grounds  thereof  were  not  stated.  (Y/Yn/i  Millin:i  Co.  v. 
linhinton,  1  R.  P.  C.  217.  And  see  Chcetham  v.  OMImm, 
5  R.  P.  C.  617.) 

The  plaintiffs  sued  for  an  infringement  of  a  patent  for 
the  manufacture  of  meal  and  flour,  and  obtained  an  order 
for  an  inspection  of  the  process  used  by  the  defendant, 
who  afterwards  moved  for  leave  to  inspect  the  plaintiff's 
process  and  take  samples.  This  was  ordered.  ( ' 
MilliiKi  r...  v.  Ilnbinxon,  8  R.  P.  C.  11.  And  see  (.'hcftham 
v.  OUfcm,  No.  2,  5  R.  P.  C.  622.) 

Where,  in  a  suit  for  an  injunction  to  restrain  the  in- 
fringement of  a  patent  for  a  sewing  machine,  an  application 
was  made  for  an  inspection  of  all  the  machines  of  every 
kind  on  the  defendant's  premises,  the  Court  declined  to 
make  the  order  in  the  terms  asked  for,  but  directed  the 
defendant  to  verify  on  affidavit  the  several  kinds  of  sewing 
machinss  which  he  had  sold  or  exposed  for  sale  since  the 
date  of  the  plaintiff's  last  disclaimer,  and  to  produce  at  his 
solicitor's  office  one  of  each  class  for  inspection  by  the 
plaintiff's  solicitor  and  two  of  their  scientific  witnesses. 
Manufacturing  Co.  v.  Wilson,  13  W.  R.  560; 


ACTIONS  FOE  INFRINGEMENTS  279 

5  N.  E.  505.  And  see  Drake  v.  Muntz's  Metal  Co.,  3  E.  P.  C. 
43.) 

A  licensee  who  is  not  a  party  to  the  action  cannot 
be  compelled  to  give  inspection  in  an  action  against  his 
licensor.  (Germ  Milling  Co.  v.  Robinson,  3  E.  P.  C.  14.) 

Particulars  of  Breaches. — By  the  Patents  Act  of  1883, 
sect.  29,  the  plaintiff  in  an  action  for  infringement  of  a 
patent  must  deliver  with  his  statement  of  claim,  or  by  order 
of  the  Court  or  the  judge  at  any  subsequent  time,  particulars 
of  the  breaches  complained  of.  The  particulars  may  be  from 
time  to  time  amended  by  leave  of  the  Court  or  a  judge. 

If  the  particulars  delivered  are  insufficient,  further  and 
better  particulars  may  be  required.  In  Necdham  v.  Oxlcy 
(I  H.  &  M.  248),  it  was  held  by  Wood,  V.  C.,  that  particu- 
lars of  breaches  are  sufficient  if,  taken  together  ivith  the 
pleadings,  they  give  the  defendant  full  and  fair  notice  of  the 
case  made  against  him.  See,  however,  the  subsequent 
case  of  Curtis  v.  Platt  (8  L.  T.  657),  before  the  same  learned 
judge. 

A  plaintiff  may  be  ordered  to  point  out  by  reference  to 
the  pages  and  lines  the  parts  of  his  specification  which  he 
alleges  to  be  infringed.  (Lamb  v.  The  Nottingham  Manu- 
facturers' Company,  Seton  on  Decrees,  4th  ed.  p.  349.)  But 
this  will  not  be  required  when  the  things  alleged  to  be  an 
infringement  have  been  made  an  exhibit  in  the  action. 
(Batley  v.  Kynock,  No.  2,  L.  E.  19  Eq.  229.)  Or  when  the 
particulars  of  breaches  and  the  claims  in  the  specification 
alleged  to  have  been  infringed  sufficiently  enable  the  de- 
fendant to  know  what  he  will  have  to  meet  at  the  trial. 
(Cheetham  v.  Oldham,  No.  3,  5  E.  P.  C.  624.) 

An  application  by  a  plaintiff  for  leave  to  amend  his 
particulars  of  breaches  may  be  made  to  the  Court  or  a  judge 
under  sect.  29  (5)  of  the  Act  of  1883.  An  application  by 
either  party  for  an  order  for  further  and  better  particulars 
of  breaches  or  objections  may  be  made  under  E.  S.  C., 
0.  XIX.  r.  7. 

Other  cases  bearing  upon  the  amendment  of  particulars 
of  breaches  are  Flower  v.  Lloyd  (20  S.  J.  860) ;  Church 


'-'SO  ACTIONS  FOR   I  M  1:  1  \OBXBST8 


l-Iii'iui"  IIIKI  CuiHjHiufi  v.  ll'tlji'in   i:i    II.  1'.  (  .    rj:t    :    / 

7'.  /././/..//.  (,'i>ii>,uni  \.  :  '  .268);  (.'hrftham 

v.  tn.ih.im.  No.a(6B.P.< 

Cases  as  to  furtlu  r  particulars  of  I  trenches  :  A'/*.-//  v. 

Itntl.-r    .1     I!.    I1.    «  .     189    :      Til.ihm.n,' 

,1  K.  r.  C,  W8)  :    ftuwll  v.  //„(//././    -j  i;.  P.€,  i 
leg  v.  Pifetorifl  iinU,,-,-  Co,  <:»  i;.  I1.  (  .  :t:,i.  :  //•/ 

..  //.,//  ,  i  i;.  I1.  (  .  -jo;;  :  7.7,/-/,Y/,  v.  ////..   (6  K.  i 
87). 

r,irti<  alia  timi*.  —  The  twenty-ninth  section  of 

the  Patents  Act  of  1888,  subsections  '2  ami  :t,  requires  the 
defendant  to  deliver  with  his  statement  of  defence,  or  by 
or.lt  r  of  the  Court  or  a  judge  at  any  subsequent  time. 
particulars  of  any  objections  on  which  he  relics  in  support 
thereof;  and  if  the  defendant  di>put<  .lidity  of  the 

patent,  the  particulars  delivered  by  him  inu.st  state  on  what 
grounds  he  disputes  it  ;  and  if  one  of  these  grounds  is  want 
of  novelty,  he  must  state  the  time  and  place  of  the  pre\iou^ 
publication  or  user  alleged  by  him.  And  subsection  5  en- 
ables the  defendant  to  amend  such  particulars  from  time 
to  time  by  leave  of  the  Court  or  judge.1 

If  a  defendant  relies  as  an  objection  to  a  patent  on  general 
public  knowledge  of  the  invention  before  the  date  of  the 
patent,  he  should  not  mention  in  his  particulars  of  objec- 
tion the  several  books  or  publications  which  he  takes  to  be 

1  I'pon  the  corresponding  section  (41)  of  the  Patents  Act  of  1852  the 
following  cases  have  been  reported:  —  I'enn  v.  Dibby  (L.  R.  1  Eq.  648); 
Grover  A  Baker  Company  v.  Wilson  (\\.  N.  H70,  p.  78);  flower  v.  Lloyd 
.(1..  U.  G  Ch.  D.  297)  ;  Crouley  v.  Tomey  (L.  R.  2  Ch.  D.  533)  ;  Plimpton  v. 
Spilltr  (20  S.  J.  859)  ;  Morgan  v.  Fuller,  No.  2  (L.  R.  2  K.,.  297). 

It  has  been  held  that  the  objections  cannot  go  beyond  the  pleas  ;  they 
are  merely  to  state  more  particularly  what  the  pleas  state  generally.  (Mac- 
namara  v.  Hulse,  2  W.  P.  C.  128.)  As  to  other  points  bearing  upon  this 
subject  see  Palmer  v.  Wagttaff  (8  Ezch.  Rep.  840);  Palmer  v.  Cooper 
(9  Exch.  Rep.  231);  Hull  v.  Bollard  (1  H.  &  X.  134);  Lister  v.  leather 
(3  Jur.  s.  s.  Hlfi)  ;  Grearts  v.  Eastern  Counties  Railway  Company  (1  Ell.  A" 
Ell.  %1  ;  S.C.5  Jur.  x.  s.  733)  ;  Talbot  v.  Laroche  (15  C.B.310)  ;  Electric 
Telegraph  Company  v.  Xott  (4  C.  B.  462)  :  Fislier  v.  Dcwick  (1  W.  P.  C. 
r>:>\  ».);  Heath  v.  Vnicin  (1  W.  P.  C.  551);  Jones  v.  Berger  (1  W.  P.  C. 
544  n.)  ;  Househill  Company  v.  Xcilson  (1  W.  1'.  C.  552)  ;  Holland  v.  Fox 
<1  C.  L.  R,  440). 


ACTIONS  FOK  INFRINGEMENTS  .281 

proofs  of  that  knowledge,  or  which  gave  to  the  public  the 
means  of  acquiring  it.  General  public  knowledge  must  be 
proved  by  witnesses  in  the  ordinary  way  at  the  trial,  and 
they  may  refer  if  necessary  to  well-known  books.  In  the 
meantime  he  may  be  required  to  strike  out  of  his  particulars 
those  publications  which  go  to  prove  public  knowledge  only. 
On  the  other  hand,  if  a  defendant  relies  on  any  publica- 
tions as  anticipations  of  the  invention,  he  must  state  in  his 
particulars  the  nature  of  the  anticipation  on  which  he 
relies,  and  what  those  publications  are  and  where  they  are 
to  be  found ;  and  must  indicate  that  he  relies  on  them  as 
anticipations,  and  not  as  showing  the  state  of  public  know- 
ledge. In  the  case  of  a  specification  that  part  of  the  claim 
on  which  he  relies  should  be  shown.  Generally  speaking, 
,  he  need  not  state  particular  pages  of  the  books  or  specifi- 
cations, unless  the  matter  would  be  doubtful  without  that 
information.  (Holliday  v.  Heppenstall,  in  the  Court  of 
Appeal,  L.  E.  41  Ch.  D.  109;  6  E,  P.  C.  320.) 

Previous  to  this  enunciation  of  the  practice  a  defendant 
had  been  ordered  to  give  the  pages  and  lines  of  the  specifi- 
cations and  books  to  which  he  referred  as  anticipating  the 
plaintiff's  invention,  and  to  state  which  of  the  claims  in  the 
plaintiff's  specification  had  been  anticipated  by  the  prior 
specifications.  (London  and  Leicester  Hosiery  Company  v. 
Higham,  Lawson's  Patents  Acts,  2nd  ed.  p.  498 ;  see  also 
Harris  v.  Rotlncell,  1  Griff.  P.  C.  110.) 

And  another  defendant,  in  referring  to  a  book  on  which 
he  relied  as  anticipating  the  plaintiff's  invention,  was  ordered 
to  refer  to  specified  parts  thereof,  and  where  there  were 
words  in  the  particulars  denoting  reliance  upon  the  whole 
of  the  various  earlier  specifications,  they  were  directed 
to  be  struck  out,  leaving  him  at  liberty  to  refer  to  pages 
and  lines.  (Harris  v.  Eothwell,  3  E.  P.  C.  243.  And  see 
Fowler  v.  Gaul,  3  E.  P.  C.  247.)  However,  it  has  not  been 
unusual  in  practice  to  refer  to  the  whole  specification,  and 
if  there  was  no  special  complication  this  was  not  often 
objected  to. 

When  objection  is  made  in  general  words  to  a  discon- 


I'M'  ACTIONS  FOR  INFRINGEMENTS 

formity  !><t  wtt-n  the  provisional  and  the  complete  specifics* 
.  an  ord.  i    fur   !>•  tt<  r   particulars  may  be  obtained. 
1. !«.//.•-. I Hi.TiVuM  linixli  /•;/,, vnV  I.i-iht  Corporation  T.  Cromp- 
i  i:.  I1.  <  .  -27.) 

I'mler  an  objection  that  tin-  inv.  minn  is  not  new  : 
defendant  may  show  the  want  of  novelty  of  one  of  two  in- 
ventions described  in  the  specification. 
L.  R.  2  Q.  B.  1).  498.) 

As  to  tin-  terms  on  which  leave  to  amend  particulars 
of  objection  are  granted  under  special  circumstances,  see 
<Htn  v.  St.-cl  r2  K.  I'.  (  .  l:t'.i.  ;   Khrlirh  v.  11,1.-,    (4  B.  J 
115).     Here  the  form  of  the  order  as  to  costs,  \\ 
defendant  applied  to  amend  his  particulars  of  obji. 
aftt T   the  case  had  been  set  down  for   hearing,  was  con- 
sidered.    Park* ••/•  v.  Mui'int  n'x  Filtrf  llnpi  \\.  1'.  C. 
207).     In  this  case  the  application  to  amend  the  particulars 
was  made  on  the  eve  of  trial.     Hlab-ii  v.  Lnth.ux  td  It.  P.  C. 
29) ;  S.  ( '.  on  appeal  (6  K.  P.  C.  184).     In  this  case  lea 
amend  was  granted  during  the  trial,  which  was  adjourned. 

other  cases  bearing  upon  the  amendment  of  particulars 
of  objection  are  Jioyd  v.  //  :t  II.  1'.  C.  285)  ;  /;«•//»/  v. 

/for/-*.,-/.*  (5  II.   1'.  (  .  ".7    :  r.ir,;ill  \.  '/',*,;».•  (7  II.  1 

The  following  cases  were  decided  under  the  old  law  with 
reference  to  the  amendment  by  the  defendant  of  his  par- 
ticulars of  objection: — I'-nn  v.  />//>//»/  (L.  R.  1  Eq.  548)  ; 
Wilson  v.  (ninii  (23  W.  l;.  546)  ;  ll>  n<inl  v.  / 
(13  W.  R.  229;  11  L.  T.  N.  s.  505) ;  /><///•  v.  /./  /  I..  II. 
1  Eq.  88);  E<li*nn  T.l,'ph»,  .  I,<,li,i->  <  .  17 

Ch.  D.  137). 

Intfrrtyatoricg. — In  a  suit  for  an  injunction  a  defendant 
denying  infringement  may  be  compelled  to  answer  whether 
he  used  the  plaintiff's  materials,  whether  he  makes  any 
addition  to  them,  and  whether  such  addition  makes  any 
difference.  (U<->mr<i  v.  /  /,  10  L.  T.  N.  s.  94.)  As 

to  the   limits   of  such   discovery  see   Cro»»ley   v.    7 
(2  C.  L.  D.  58) ;  Crosslcy  v.  Steicart  (1  N.  II.  42fi  i  :   /,'.,//*  v. 
Isaacs  (W.  N.  1878,  86) ;  Lister  v  I  (2  R.  P.  C.  68) ; 

M  *  l,-;,  v.  Victoria  Rubber  Co.  (3  R.  P.  C.  351).    As  to  the 


ACTIONS  FOR  INFRINGEMENTS  283 

discovery  which  a  defendant  in  such  a  suit  may  obtain  from 
the  plaintiff  as  to  his  patent,  seeRenard  v. Levinstein  (11  L.T. 
N.  s.  79) ;  Ho/man  v.  Postill  (L.  E.  4  Ch.  673) ;  Germ  Milling 
Co.  v.  Robinson  (3  E.  P.  C.  11) ;  Edison  &  Swan  Co.  v.  Hol- 
land (5  E.  P.  C.  213) ;  Ehrlich  v.  Ihlee  (5  E.  P.  C.  37). 

A  plaintiff  may  be  interrogated  as  to  documents  in  his 
possession  relating  to  the  preparation  of  his  specification. 
(Moseley  v.  Victoria  Rubber  Co.,  3  E.  P.  C.  351.) 

A  defendant  who  has  furnished  particulars  literally  in 
compliance  with  the  statute  may  be  called  upon  to  answer 
interrogatories  as  to  the  names  and  addresses  of  alleged 
prior  users,  and  whether  the  machines  are  in  existence. 
(Birch  v.  Mather,  L.  E.  22  Ch.  D.  629.) 

Order  for  Production  of  Models  Refused. — In  an  action 
for  the  infringement  of  a  patent  for  improvements  in  presses 
for  pressing  tiles,  the  plaintiff,  after  the  delivery  of  parti- 
culars of  objection,  applied  to  a  judge  at  chambers  for  an 
order  for  the  production  by  the  defendant  to  the  plaintiff, 
before  the  trial,  of  all  dies,  models,  and  drawings  of  dies 
intended  to  be  produced  by  the  witnesses  on  behalf  of  the 
defendants  at  the  hearing  of  the  action.  The  judge  held 
that  as  the  articles  called  for  were  not  shown  to  be  in  the 
possession  or  power  of  the  defendants,  he  had  no  juris- 
diction to  make  such  an  order,  and  the  Court  of  Appeal 
held  that  he  did  rightly.  (Garrard  v.  Edge,  6  E.  P.  C. 
372.) 

Inspection  of  Documents. — Communications  between  an 
inventor  and  his  patent  agent  are  not  privileged,  and  there- 
fore, where  the  patent  agent  of  a  party  to  an  action  for 
infringement  is  also  his  solicitor,  the  other  party  can  claim 
to  see  the  communications  made  to  the  solicitor  in  his 
capacity  of  patent  agent,  if  there  is  otherwise  no  valid 
objection  to  the  disclosure.  (Moseley  v.  Victoria  Rubber  Co., 
3  E.  P.  C.  351.)  In  this  case  it  was  held  that  the  defendants 
were  entitled  to  inspect  any  communications  between  the 
plaintiff  and  his  patent  agent  bearing  upon  the  preparation 
of  his  specification  under  a  patent  for  an  invention  which 
was  closely  connected  with  the  invention  under  an  earlier 


I'M  ACTIONS  FOR  INFRINGEMENTS 

patent  obtained  by  tin-  plaintiff  ami  aliened  to  be  infringed 
la  tin-  defendants. 

Tin-  defendants  in  an  action  for  the  infringement 
patent  belt  m^in^  to  persons  who  previously  t<>  tin  ;i  U^-oniing 
the  owners  of  it  had  in  various  proceedings  disputed  or 
made  j»n  -parations  for  disputing  its  validity  applied  to  the 
Court  for  an  order  for  the  inspection  of  certain  documents 
r.  lilting  to  those  proceedings.  It  was  held  hy  ional 

Court  that  the  defendants  were  entitled  to  have  inspection 
of  all  except  such  as  the  plaintiffs  should  state  on  oath  had 
come  into  existence  merely  to  he  communicated  to  the  soli- 
citor for  the  purpose  of  litigation  actual  or  intended,  and 
tit  her  as  materials  for  briefs  or  for  his  ;ul\i«  and  con- 
sideration. (Ihitlain  ('".  \.  Hall,  :>  IS.  P.  C.  1.) 

Litigation  had  taken  place  between  two  companies  \\ith 
regard  to  the  validity  of  a  patent  belonging  to  one  of  them. 
They  afterwards  amalgamated  and  the  new  company  brought 
an  action  for  infringement  against  H.  It  was  held  hy  the 
Court  of  Appeal  that  H.  was  entitled  to  administer  an  inter- 
rogatory as  to  the  particulars  of  objections  delivered  in  the 
ious  action  between  the  two  companies.  (Edison  & 
Sinn,  (  ...  v.  H,,ll,m,l,  5  R.  P.  C.  213.) M  In  this  case  (p.  216), 
the  practice  with  regard  to  applications  for  leave  to  ad- 
minister interrogatories  having  reference  to  documents 
supposed  to  be  in  the  possession  of  the  opposite  party,  who 
has  already  given  discovery,  is  stated. 

\\here  it  seems  probable  from  a  document  produced  by 
one  of  the  liti#itin^  parties  that  he  has  in  his  possession 
other  relevant  documents,  he  may  be  called  upon  to  make  a 
further  affidavit  in  regard  to  those  supposed  documents. 

(/>'..//•//   V.  ,S«l//KM/;j,  5  R.  P.  C.  515.) 

Trial. — Under  the  twenty-eighth  section  of  the  Act 
of  1883  the  action  is  to  be  tried  without  a  jury  unless  the 
Court  shall  otherwise  direct.  Trials  of  patent  cases  have 
very  seldom  taken  place  before  juries  since  the  Act  came 
into  operation. 

By  the  Arbitration  Act  1889  (52  &  53  Viet.  c.  49  s.  14) 
repealing  and  re-enacting  with  slight  variations  the  fifty- 


ACTIONS  FOE  INFRINGEMENTS  285 

seventh  section  of  the  Judicature  Act  of  1873,  the  judge 
before  whom  a  case  requiring  '  scientific  investigation ' 
comes  for  trial  is  empowered  to  send  the  issues  of  fact  to 
be  tried  before  a  referee.  Where  a  patent  case  had  been 
so  sent  for  trial  before  an  official  referee,  it  was  contended 
by  the  plaintiff  in  the  Court  of  Appeal  that  the  case  was 
not  one  that  required  '  scientific  investigation '  within  the 
meaning  of  the  Judicature  Act,  but  it  was  held  to  be  im- 
possible for  that  Court  to  say  that  an  action  for  the  infringe- 
ment of  a  patent  did  not  require  scientific  investigation  ; 
and  that,  as  the  judge  had  decided  that  it  did,  the  Court 
would  not  interfere  with  his  discretion.  (Saxby  v.  Gloucester 
Waggon  Co.,  W.  N.  1880,  p.  28.) 

The  referee  will  make  a  report  as  to  the  issues  of  fact 
which  were  sent  to  him  for  trial,  and  his  findings  so  reported 
are  to  be  considered  equivalent  to  the  finding  of  a  jury. 

On  the  trial  of  an  action  for  the  infringement  of  a  patent 
the  Court  has  power,  under  the  Arbitration  Act  1889,  re- 
pealing and  re-enacting  with  variations  sect.  56  of  the 
Judicature  Act  of  1873,  to  order  without  the  consent  of  the 
parties  that  a  competent  person  should  ascertain  facts  or 
make  experiments,  and  report  the  result  of  his  inquiry  for 
the  information  and  guidance  of  the  Court.  (See  Badischc 
Anilinund  Soda  Fabrik  v.  Levinstein,  L.  E.  24  Ch.  Div.  156  ; 
Mellin  v.  Monico,  L.  E.  3  C.  P.  D.  142 ;  Edison  d-  Swan 
Co.  v.  Holland,  5  E.  P.  C.  459.)  The  Court  of  Appeal  some- 
times thinks  fit  to  exercise  this  power.  (Moore  v.  Bennett, 
1  E.  P.  C.  129.) 

By  the  twenty-eighth  section  of  the  Act  of  1883  it  is 
enacted  that,  in  an  action  or  proceeding  for  infringement  or 
revocation  of  a  patent,  the  Court  may,  if  it  thinks  fit,  and 
shall,  on  the  request  of  either  of  the  parties  to  the  proceed- 
ing, call  in  the  aid  of  an  assessor  specially  qualified,  and 
try  and  hear  the  case  wholly  or  partially  with  his  assistance. 
Under  the  third  subsection  of  the  same  section  the  remune- 
ration, if  any,  to  be  paid  to  such  assessor  shall  be  deter- 
mined by  the  Court  and  be  paid  in  the  same  manner  as  the 
other  expenses  of  the  execution  of  the  Act. 


ACTIONS  FOB  INFRINGEMENTS 

By  the  nineteenth  section  of  tin-  Ait  of  1888  the  judge 
is  empowered,  in  an  action  for  infringement  or  in  a 
oeeding  for  revocation,  to  give  liberty  to  the  patentee  to 
:i|.|.l\  at  the  Patent  Office  for  leave  to  amend  bis  specifica- 
tion, and  to  postpone  tin-  trial.  iS*-.  tin?  i-hapu-r  on 
Amendments.) 

As  to  the  trial  of  causes  and  issues,  see  <  > 
Kule  ">  and  Hule  7  (a)  of  the  Supreme  Court  Rules,  1888. 

The  defendant  in  an  action  for  the  infringt  ment  of  a 
it  for  a  chemical  process  set  up  l>y  his  d.-f.  n- .  tliat  he 
had  a  secret  process  which  was  not  an  infringement.  The 
judge,  seeing  that  irreparable  mischief  would  be  done  to 
him  if  he  were  called  upon  to  state  in  open  Court  \vhat  that 
secret  process  was,  in  case  it  should  turn  out  that  tin-  patent 
was  bad,  allowed  him  not  to  answer  certain  questions  which 
were  put  to  him,  hut  left  him  to  determine  for  himself 
whether  he  would  or  not  communicate  his  secret  process  to 
the  Court,  so  that  the  Court  might  be  able  to  determine 
whether  he  infringed  the  patent  or  not.  The  defendant, 
acting  on  the  advice  of  his  counsel,  elected  before  the  termi- 
nation of  the  case  to  disclose  his  secret  to  the  judge,  who 
heard  his  description  of  it  with  closed  doors,  no  persons 

_  present  except  the  parties  and  their  scientific  assist- 
ants.   (Jitiilixcin-  Anilin  inul  Soda  Falril  v.  Ln-\nst«>.,  I..  11. 

24  Ch.  D.  156.)  See  also  Kili*nn  v.  \\',n,,lh,,n*c  (8R.  P.  C. 
172). 

A  model  whirh  has  not  bewi  put  in  evidence  may  be 
handed  up  to  the  Court  as  an  example  of  a  class  of  machine, 
in  order  to  explain  counsel's  argument.  (]i<>>i<l  v.  II '<>,- rocks, 
Appeal,  6  R.  P.  C.  154.) 

"Win-re  a  judge  at  the  trial  of  an  action  is  of  opinion 
that  the  invention  under  the  patent  is  good  subject-matter 
and  is  useful,  and  accordingly  upholds  the  patent  in  these 
respects,  his  decision  will  be  followed  by  another  judge  of 
co-ordinate  jurisdiction  in  case  the  validity  of  the  same 
patent  is  contested  on  the  same  grounds  by  another  defen- 
dant, -ham,  6  R.  P.  C.  132;  S.  C.  on 
appeal,  6  R.  P.  C.  234.) 


ACTIONS  FOR  INFRINGEMENTS  287 

Evidence. — In  regard  to  the  evidence  it  may  be  useful 
to  remember  that  the  Court  looks  with  distrust  on  experi- 
ments conducted  for  the  express  purpose  of  manufacturing 
evidence  for  the  cause.  (Young  v.  Fernie,  5  Giff.  577  ; 
Betts  v.  Neilson,  L.  E.  3  Ch.  429,  433.) 

By  the  4th  subsection  of  the  29th  section  of  the  Act 
of  1883,  no  evidence  is  to  be  admitted  at  the  hearing,  ex- 
cept by  leave  of  the  Court  or  a  judge,  hi  proof  of  any  alleged 
infringement  or  objection  of  which  particulars  have  not 
been  delivered. 

Hence  under  this  clause  the  Court  at  the  trial  has  a 
discretionary  power  to  allow  the  evidence  to  go  beyond  the 
particulars  of  breaches  or  objections.  (Britain  v.  Hirsch, 
on  appeal,  5  E.  P.  C.  226.) 

Where  particulars  of  breaches  alleged  divers  sales  and 
specified  sales  to  two  persons,  evidence  of  a  sale  to  a  third 
person  was  allowed  where  the  defendant  admitted  having 
had  transactions  with  him.  (Sykes  v.  HowartJi,  L.  E.  12  Ch. 
D.  827.) 

As  to  the  mode  of  proving  the  allegation  of  general 
public  knowledge,  see  the  case  of  Holliday  v.  Hcppcnstall, 
ante,  p.  280,  under  Particulars  of  Objections. 

In  actions  for  infringement  the  onus  of  proof  with  regard 
to  want  of  novelty  is  on  the  defendant,  and  therefore  in  an 
uncontested  case  the  plaintiff  is  not  bound  to  prove  the 
novelty  of  his  invention.  (Peroni  v.  Hudson,  I  E.  P.  C. 
261.) 

An  offer  to  execute  orders  for  swivelling  pumps  in 
response  to  applicants,  no  particular  form  of  swivelling 
pump  being  mentioned,  was  held  not  to  be  evidence  of  an 
intention  to  infringe  a  patent  for  swivelling  pumps  where 
the  specification  did  not  claim  every  kind  of  that  class  of 
pump.  It  was  to  be  presumed  that  the  offer  referred  to 
such  pumps  as  would  not  be  an  infringement  of  the  patent. 
(Gmjnne  v.  Drysdale,  2  E.  P.  C.  160;  S.  C.,  appeal,  3  E.P.C. 
65.) 

It  was  said  by  Lord  Herschcll  in  the  House  of  Lords 
(Badische  Anilin  urid  Soda  Fabriky.  Levinstein,  4  E.  P.  C. 


ACTIONS  FOR   I  MEKT8 

it  m  ith<  r  the  patentee  nor  any  other  \\itn»-^  , 
be  called  to  prove  what  was  tin    invrntimi  claimed  by  tin- 
specification.     That  question  was  to  be  answer,  d  from  a 
( i  itical  examination  of  the  instrument  )>y  tin-  Court.     It 
would  Refiu.  therefore,  that  the  cases  of  llatcman 
(Ma<  in.  in  i  '  .  Mad-.  I 

are  overruled  as  far  as  they  relate  to  this  point. 

A  patentee  who  has  assigned  his  pat*  tot  be  re- 

strained,  on  the  trial  of  an  action  for  infringement  hrougbt 
1'Y  the  assignee  against  a  third  party,  from  giving  informa- 
tion  in   his  possession  which  might  tend  to  show  that  tin- 
it    is   invalid.      (L«iul»n    nml   l,tic<xt<r   II 

..i.i,  :*  i;.  r.  0.  -251.) 

A  plaintiff  is  entitled  to  adduce  evidence  in  reply  for 
tlu-  purpose  of  rebutting  the  case  set  up  by  the  defendant. 
I/',////  v.  .l.ick,  L.  R.  2Eq.  817.) 

As   to  the  circumstances   under   which   the  Court  of 
Appeal  will  admit  or  refuse  further  evidence  in  patent  cases 
under  Order  LVIII.,Rule4, of  the  Supreme  Court  Itules,  1888, 
see  7/i //</»•   v.  Oxlnrm-  ("1  It.  P.  C.  45)  ;    II 'atlinii  \.  St. 
(8R.P.C.  147);  Wall»-  \.  lif/.lm.CaH,,,,,  Siiwin-al,  (3R.P.C. 
253)  ;  American  Brai<L<l  U'ir>    C,,.  \.   Thornton  (5  R.  P.  C. 
118) ;  Britain  v.  Hirxch  (5  R.  P.  C.  22*. 
}'<il,  llnUn-r  ( :>.  (6  R.  P.  C.  46) ;  7*/»i /.•••»/  v.  Latham  (6  R.  I1  (  . 
184). 

The  opinion  of  scientific  witnesses  is  only  admissible  as 
proof  of  facts.  Their  opinion  whether  there  has  been  an 
infringement  or  not,  though  sometimes  received  in  order  to 
save  time,  is  strictly  speaking  inadmissible,  and  if  objected 
to  ought  to  be  rejected.  The  Court  alone  is  to  decide 
questions  of  law.  Per  /,"/•'/  U".  //*//  //</<//<,  in  .sv,  //  v.  I!i;i:iim< 
(8  H.  L.  C.  550).  See  also  HVx/i»///'"«*e  v.  Lancashire  and 
Yorkshire  Railway  Co.  (1  R.  P.  C.  229).  But  although  it  is 
not  for  a  witness  to  construe  a  specification,  it  is  allowable 
to  ask  him  in  an  ordinary  way  what  he  understands  by 
it.  Per  lAtrd  Hahbury,  C.,  in  Kayc  v.  Chubb  (5  R.  P.  C. 
650). 

In  regard  to  the  proof  of  documents  in  the  Patent  Office, 


ACTIONS  FOR  INFRINGEMENTS  289 

or  of  copies  or  extracts  from  such  documents,  see  Chapter 
XXIII. 

Functions  of  the  Judge  and  Jury  at  the  Trial. — When  a 
patent  case  is  tried  before  a  jury  it  is  the  duty  of  the 
judge,  where  a  specification  comes  into  question,  to  explain 
to  the  jury  what  that  instrument  directs  to  be  done,  and 
it  is  for  the  jury  to  say  whether,  upon  the  evidence,  the 
promised  result  will  be  accomplished  by  pursuing  those 
directions.  (Per  Cresswell,  J.,  in  Beard  v.  Egerton,  8  C.  B. 
165 ;  19  L.  J.  C.  P.  36.) 

The  construction  of  a  specification  belongs  to  the  Court 
alone,  but  if  the  case  is  tried  before  a  jury,  then  the  atten- 
dant circumstances  and  the  true  meaning  of  the  technical 
phrases,  if  there  be  any,  are  questions  which  must  be 
ascertained  by  the  jury.  (Neilson  v.  Harford,  1  W.  P.  C. 
370;  Bovillv.  Pimm,  11  Ex.  718;  Otto  v.  Linford,  Court 
of  App.  46  L.  T.  N.  s.  35 ;  United  Telephone  Co.  v.  Bas- 
sano,  3  B.  P.  C.  295.)  '  Where  novelty  or  infringement ' 
(said  Lord  Campbell,  in  Seed  v.  Higgins,  8  H.  L.  C.  561) 
'  depends  merely  on  the  construction  of  the  specification, 
it  is  a  pure  question  of  law  for  the  judge  ;  but  where  the 
consideration  arises  how  far  one  machine  imitates  or  re- 
sembles another  in  that  which  is  the  alleged  invention,  it 
generally  becomes  a  mixed  question  of  law  and  fact  wrhich 
must  be  left  to  the  jury.'  It  is  also  for  the  Court  to  decide 
the  question  as  to  the  identity  of  inventions  described  in 
two  nearly  contemporaneous  specifications,  when  such  ques- 
tions can  be  determined  by  a  simple  comparison  of  the 
specifications.  (Per  Coltman,  J.,  in  Allen  v.  Rawson,  1  C. 
B.  571 ;  per  Pollock,  C.  B.,  in  Tetley  v.  Easton,  at  Nisi 
Prius,  Macr.  P.  C.  68 ;  and  per  Erie,  J.,  in  Bush  v.  Fox, 
Macr.  P.  C.  168  ;  Booth  v.  Kennard,  2  Hurlst.  &  Norm.  84 ; 
Thomas  v.  Foxwell,  6  Jur.  N.  s.  271  ;  Hills  v.  London  Gas 
Light  Company,  5  Hurlst.  &  Norm.  312.  See,  however, 
the  observations  of  C.  J.  Tindal,  in  Muntz  v.  Foster,  2  W. 
P.  C.  105.)  But  if  anything  more  than  simple  comparison 
is  required  to  determine  the  identity  or  dissimilarity  of  two 


290  ACTIONS  FOK  iEMENTB 

inventions,  the  question  most  be  submitted  to  the  decision 
if  tin-  jury. 

•  We  by  no  means  lay  down  as  a  general  rule '  (said 
npln-U,   ('.  ./.,  in    'I'ltonuu  v.  1  5  Jur.  H.  s. 

87)  'that  upon  a  question  of  novelty  of  invention  such  as 
this,  raised  by  the  comparison  of  two  specifications,  it  must 
necessarily  be  a  question  of  law  for  the  Court.  The  speci- 
fications may  contain  expressions  of  art  and  commerce 
upon  which  experts  must  be  examined,  and  there  may  be 
conflicting  evidence,  raising  a  question  of  evidence  to  be 
il«  t« •nnined  by  the  jury.  But  it  is  quite  clear  that  there 
may  be  cases  in  which  the  Court  would  be  bound  to  decide 
the  question  of  novelty  exclusively,  for  the  two  specifica- 
tions might  be,  in  ipgiggimix  rcrlrig,  the  same  ;  and  if  they 
be  in  such  plain  and  common  language  that  the  judge  is 
sure  he  understands  their  meaning,  he  is  bound  to  con- 
strue them  as  he  does  other  written  documents.'  '  If  there 
be  two  specifications  to  be  compared '  (said  Lor<l  I ! 
('.,  in  Hills  w.l  .  4  De  G.  F.  &  J.  288-298),  '  in  order 
to  arrive  at  a  conclusion  of  fact,  the  right  of  drawing  the 
inference  of  fact  from  the  comparison  belongs  to  the  jury, 
and  is  a  question  of  fact,  and  not  a  question  of  law.' 

Steiner  obtained  letters  patent  for  a  new  manufacture 
of  a  certain  colouring  matter  called  garancine,  extracted 
from  madder-root,  and  extensively  used  in  dyeing, 
colouring  matter  was  formerly  extracted  by  simply  boiling 
the  root  in  water,  and  the  refuse  matter,  termed  '  spent 
madder,'  was  thrown  aside  as  useless.  Steiner's  process, 
under  his  first  patent,  obtained  in  1832,  was  the  employ- 
ment of  diluted  sulphuric  acid  of  a  given  strength,  and  he 
proposed  to  apply  it  to  the  extraction  of  the  colouring 
matter  from  both  fresh  and  spent  madder.  In  1843  Steiner 
took  out  another  patent,  specially  applicable  to  the  extrac- 
tion of  garancine  from  spent  madder.  A  much  stronger 
solution  of  sulphuric  acid  was  now  used,  and  heat  was 
employed.  He  thus  obtained  a  large  portion  of  the  garan- 
cine which  had  previously  remained  attached  to  the  woody 
fibre.  C.  B.  Pollock,  at  the  trial  of  an  action  brought  for 


ACTIONS  FOR  INFRINGEMENTS  291 

an  infringement  of  the  latter  patent  (Steiner  v.  Heald, 
2  Car.  &  Kir.  1033),  said,  '  It  appears  to  me  that  this  is 
precisely  the  same  as  if  you  applied  a  process  to  grapes 
already  imperfectly  squeezed,  by  which  you  squeeze  a  little 
more  juice  out  of  them  than  was  formerly  done.'  Believing 
the  invention  to  be  destitute  of  novelty,  he  directed  the  jury 
that,  in  point  of  law,  the  invention  under  the  second  patent 
was  not  patentable.  The  jury  gave  their  verdict  in  favour 
of  the  defendant,  but  the  verdict  was  set  aside,  and  a  new 
trial  granted  on  the  ground  of  misdirection.  The  judge, 
it  will  have  been  observed,  treated  the  conclusion  to  be 
drawn  from  the  evidence  as  a  matter  of  law ;  whereas  he 
ought  to  have  left  it  to  the  jury  to  say  whether  fresh  and 
spent  madder  had  different  properties,  chemical  or  other- 
wise, or  whether  they  were  the  same  thing,  with  the  differ- 
ence only  that  part  of  the  colouring  matter  had  been  already 
extracted.  If  the  properties  of  the  two  substances  were 
different,  the  invention  was  a  new  manufacture ;  but  if  the 
two  things  were  the  same,  except  that  one  was  more 
charged  with  colouring  matter  than  the  other,  in  that  case 
the  invention  claimed  would  simply  have  been  the  applica- 
tion,of  a  process  already  known,  producing  a  known  result. 
It  was  for  the  jury  to  say,  upon  the  evidence,  whether  the 
invention  was  a  new  manufacture  or  not.  (Steiner  v. 
Heald,  6  Exch.  Eep.  607.) 

The  question  of  infringement  is  one  of  mixed  law  and 
fact.  '  There  may  well  be  a  case '  (said  Lord  Campbell,  in 
De  la  Rue  v.  Dickinson,  7  E.  &  B.  738)  '  where  the  judge 
may  and  ought  to  take  upon  himself  to  say  that  the  plain- 
tiff has  offered  no  evidence  to  be  left  to  the  jury  to  prove 
infringement,  as  if  there  be  a  patent  for  a  chemical  com- 
position, and  the  evidence  was  that  the  defendant  had  con- 
structed and  used  a  machine  for  combing  wool.  But  if  the 
evidence  has  a  tendency  to  show  that  the  defendant  has 
used  substantially  the  same  means  to  obtain  the  same 
result  as  specified  by  the  plaintiff,  and  scientific  witnesses 
have  sworn  that  the  defendant  actually  has  used  such 
means,  the  question  becomes  one  of  fact  or  of  fact  mixed 

v  2 


L'!'2  TION8  FOR   P  18 

with  law,  which   the  jud^e  is  hound  to  Mihmit  to  tin- jury.' 
In  deciding  the  question  of  infringement  tin-re  i*  i- 
II", •;/>•/. //•/.»/.-,  in  .v.  •••/  v.  Ili'i'iiit*.  s  H.  I.,  ('as.  550)  'a  ques- 
tion of  fact  wholly  for  the  jury     \i/.  \\hat  the  defendant* 

done:   and  if  scientific  e\i.l.  necessary  fill', 

elucidate  the  case  on  either  hi  no  doubt  admissil  !•  : 

and  in  determining  the  question  of  infringement  the  j 
must  apply  what  the  jury  find  to  1)6  tr 

It  is  a  question  for  the  judge  whether.  <>n  proof  of  c«  rtain 
having  been  done  by  a  defendant,  tin  plaintiff  has  any 
case  to  go  to  the  jury.    Per  L»\-<\  rA/////*/../W,  in 
lli:i,iiiu  (8  H.  L.  C.  550). 

])<i  I'nttitx.    tt  is  now  settled  thai  the 

plaintiff  in  a  patent  action  cannot  have  hoth  damages  siinl 
an  account  of  profits,  but  must  elect  between  the  two  \\hich 
he  will  adopt.  (AV,7x,,»  v.  lt,-tt*.  L.  I{.  f>  H.  L.  1.) 

In  estimating  the  amount  of  dani'iges  sustained  hy  a 
jdaintiff  in  respect  cf  an  infringement  of  his  patent,  the 
Court  adopts  a  form  of  inquiry  different  from  that  which  it 
employs  in  the  analogous  case  of  an  imitation  of  a  plaintiffs 
trade-mark.  In  the  latter  instance  the  Court  will  not  as- 
sume in  the  absence  of  evidence  that  the  plaintiff  would 
have  sold  all  the  articles  which  the  defendant  has  wi • 
fully  sold.  (The  Leather  Clnth  ('•>.  \.  Iliwh/.M,  L.  1:.  1 
Eq.  299.)  But  every  sale  without  licence  of  a  patent  article 
must  be  a  damage  to  the  patentee,  and  therefore  the  inquiry 
in  a  patent  case  will  extend  to  the  sale  by  the  defendant  of 
ant/  articles  made  by  him  since  the  infringement  was  com- 
menced. (Dar<n]><>rt  v.  Rylands,  1  L.  R.  Eq.  308.)  The 
inquiry  will  extend  to  the  sales  by  the  defendant  within  six 
years  before  the  commencement  of  the  proceedings  (Da 
port  v.  Rylanth,  L.  R.  1  Eq.  80*2  :  r/- »/,)/  v.  />»•/•////  (in* 
Li'lht  Co.,  1 W.  P.  C.  119) ;  but  if  the  plaintiff  be  an  assi 
of  the  patent  the  amount  will  only  be  taken  from  the  date 
of  the  registration  of  the  assignment  to  him.  (Eln-<»»l  v. 
Christy,  5  N.  R.  812.)  And  in  stating  such  an  account  tile- 
defendant  must  file  an  affidavit,  stating  the  number  of  tin- 
patented  articles  made  by  him  since  the  date  of  the  patent. 


ACTIONS  FOE  INFRINGEMENTS  293 

uncl  the  names  and  addresses  of  the  purchasers  to  whom 
the  same  have  been  sold  (Murray  v.  Clayton,  L.  E.  15  Eq. 
115  ;  American  Braided  Wire  Co.  v.  Thomson,  No.  2,  5 
E.  P.  C.  375),  and  the  account  may  be  taken  notwithstand- 
ing the  pendency  of  an  appeal.  (Saxby  v.  Eastcrbrook,  L.  E. 
7  Ex.  207.) 

Where  separate  proceedings  have  been  taken  against 
the  manufacturer  and  user  of  the  patented  article  the 
plaintiff  may  have  an  account  of  profits  against  the  manu- 
facturer, and  also  damages  against  the  user  (Pcnn  v.  Bibby, 
L.  E.  3  Eq.  308 ;  United  Telephone  Co.  v.  Walker,  4  E.  P.  C. 
67),  and  he  cannot  be  compelled  to  accept  the  same  royalty 
from  a  litigant  as  he  receives  from  others  (ibid.) ;  but  a 
patentee  being  himself  a  manufacturer  of  the  patented 
article,  and  having  been  in  the  habit  of  licensing  the  use  of 
his  invention  on  payment  of  a  fixed  royalty,  is  not  entitled 
to  claim  as  against  an  infringer  a  manufacturing  profit  in 
addition  to  his  ordinary  royalty  (Pcnn  v.  Jack,  L.  E.  5  Eq. 
81) ;  and  where  such  a  patentee  had  in  some  instances 
received  from  users  (not  being  the  manufacturers  of  the 
patented  article)  his  ordinary  royalty,  it  was  held  that  in 
every  such  case  no  further  royalty  was  payable  by  the 
manufacturer  (ibid.) . 

Where  there  has  been  unnecessary  delay  in  filing  the 
Lill  an  account  of  profits  before  the  filing  of  the  bill  will 
not  be  ordered.  (Harrison  v.  Taylor,  11  Jur.  N.  s.  408  ; 
Beard  v.  Turner,  13  L.  T.  N.  s.  746  ;  Ford  v.  Foster,  L.  E. 
7  Ch.  616  ;  Crossley  v.  Derby  Gas  Light  Company,  1  Web. 
P.  C.  120.) 

In  taking  the  account  of  profits  made  by  the  use  of  his 
invention,  a  successful  plaintiff  is  entitled  to  know  for  com- 
parison the  profits  made  by  the  defendants  in  their  business 
prior  to  the  date  at  which  they  first  used  the  plaintiff's  in- 
vention. (Siddett  v.  Vickcrs,  6  E.  P.  C.  464.) 

The  material  question  for  consideration  in  estimating 
damages  is  the  actual  loss  entailed  on  the  patentee,  not  the 
profit  made  by  the  infringer.  (United  Horscnail  Company 
V.  Stewart,  L.  E.  13  App.  Ca.  413.)  And  in  that  case 


294  ACTIONS  FOR  INFRINGEMENTS 

it  was  laid  down  that  the  measure  of  damages  was  the 
extent  to  which  tin-  infringing  articles  interfered  with  the 
sale  of  tin-  patented  goods.  And  see  .1  ii<l"l 

U'ire  Co.  v.  77i..mx,,ii  (6  Times  R.  251). 

As  to  the  measure  of  damages  and  the  principle  <>f 
assessment  where  tin  infringing  articles  are  only  partly 
covered  liy  the  patent,  and  are  let  out  at  a  rental,  see  Unit-  if 
V. /,/.//..//.  <:,,,tjHinii  v.  H'«///..r  ,(  <Hi,-,r  (4  R.  P.  C.  ' 

When  an  amendment  by  way  of  disclaimer,  com  • 
or  explanation  has  been  allowed  under  tin   Patents  Act  of 
1888  (see  sect.  20),  no  damages  are  obtainable  in  any  action 
in  respect  of  the  use  of  the  invention  before  the  am- 
nu-nt  unless  the  patentee  establishes  to  the  satisfaction  <>f 
the  Court  that  his  original  claim  was  framed  in  good  faith 
and  with  reasonable  skill  and  knowledge. 

The  seventet -nth  section  of  the  Patents  Act  of  188S 
directs  (subsect.  4  b)  that  if  any  proceeding  shall  he  t: 
in  respect  of  an  infringement  of  a  patent  committed  at: 
failure  to  make  any  prescribed  payment  within  t  In- 
scribed time  and  before  the  enlargement  of  the  time,  tin- 
Court  before  which  the  proceeding  is  proposed  to  be  taken 
may,  if  it  shall  think  fit,  refuse   to   award  or   give  any 
damages  in  respect  of  such  infringement. 

/' i-]>.  ttuil  Injunction*. — The  plaintiff  is  entitled  to  a 
perpetual  injunction  to  restrain  future  infringements  when 
the  validity  of  the  patent  has  been  conclusively  established, 
and  the  fact  of  infringement  has  been  proved.  And  if  tin- 
defendant  chooses  to  submit  the  injunction  may  be  obtained 
without  proceeding  to  trial. 

Rule  16  of  order  LVIII.  of  S.  C.  R.  directs  that  there 
shall  be  no  stay  of  proceedings  pending  appeal,  except  so 
far  as  the  Court  appealed  from  or  a  judge  thereof  or  the 
Court  of  Appeal  may  order.  See  J-'l<m-< •/•  v.  /./«•////  <:{!'•  L.  T. 
N.  s.  444)  ;  Waxhltnn  <(,:  < ;,.  v.  /'„//,•;•*„//  (1  R.  P.  C.  158, 
171)  ;  /•:</xf,r/»;v«./,-v.  d.  M'.  /,'.  r...  (2  R.  P.  C.  201) ; 
v.  Fnuer  (8  R.  P.  C.  7);  Ott,,  \.  Sted  (3  R.  P.  C. 
Kmi,-  v.  ( 'Jnilib  (4  R.  P.  C.  28) ;  Ifnmphcrsion  v.  .S//»-r  (4  B,  P.O. 
1.84). 


ACTIONS  FOE  INFRINGEMENTS  295 

A  patentee  after  disclaiming  will  not  be  allowed  to 
enforce  an  injunction  obtained  before  disclaiming,  but  must 
proceed  dc  novo.  (Dudgeon  v.  Thomson,  L.  E.  3  App.  Cas. 
34.) 

Delivery  up  or  Destruction  of  Machines. — The  Court  has 
power  to  order  the  infringing  machines  to  be  delivered  up 
to  the  plaintiff,  as  well  as  any  articles  in  the  defendant's 
possession  made  by  them.  It  may  also  order  the  destruc- 
tion of  machines  made  in  violation  of  a  patent.  (Betts  v.  De 
Vitre,  34  L.  J.  N.  s.  289,  291 ;  Tangye  v.  Stott,  14  W.  E. 
386.)  However,  where  the  patent  was  for  a  combina- 
tion, and  the  defendant  might  still  use  for  other  purposes 
the  several  parts  of  the  machine,  Wood,  V.  C.,  refused  to 
order  the  machines  to  be  destroyed,  but  directed  them  to 
be  marked  so  as  to  prevent  their  being  used  at  any  future 
time  in  such  a  way  as  to  continue  the  infringement.  (Need- 
ham  v.  Oxley,  8  L.  T.  N.  s.  604.)  In  Plimpton  v.  Malcolmson 
(Seton  on  Decrees,  4th  ed.  p.  354),  the  order  was  that  the 
defendant  should  upon  oath  deliver  up  to  the  plaintiff,  or 
break  up  or  otherwise  render  unfit  for  use,  the  articles 
complained  of.  See  also  Frearson  v.  Loe  (L.  E.  9  Ch.  D. 
48,  67). 

SCOTLAND. 

The  107th  section  of  the  Patents  Act  of  1883  directs 
that  in  any  action  for  infringement  of  a  patent  in  Scotland 
the  provisions  of  the  Act,  with  respect  to  calling  in  the  aid 
of  an  assessor,  shall  apply,  and  the  action  shall  be  tried 
without  a  jury,  unless  the  Court  shall  otherwise  direct ;  but 
otherwise  nothing  shall  affect  the  jurisdiction  and  forms  ot 
process  of  the  Courts  in  Scotland  in  such  an  action,  or  in 
any  action  or  proceeding  respecting  a  patent  hitherto  com- 
petent to  those  Courts.  For  the  purposes  of  this  section 
*  Court  of  Appeal'  is  to  mean  any  court  to  which  such 
action  is  appealed. 

And  by  the  lllth  section  the  provisions  of  the  Act 
conferring  a  special  jurisdiction  on  the  Court  as  defined  by 
the  Act  shall  not,  except  so  far  as  the  jurisdiction  extends, 
affect  the  jurisdiction  of  any  court  in  Scotland  in  any  pro- 


296  A' 

ceedingH  relating  to  patents;  an<l  with  c  to  any 

such  proceedings  in  N-,.tl.md  the  term  'the  Court*  shall 
mean  any  Lord  Ordinary  of  th«  (  '..art  of  Session,  and  tin 
term  'Court  of  Appeal'  shall  mean  cither  di\i.*ion  of  the 
said  Court. 

R.  8.  C.  0.  XL  r.  2  provides  that  where  leave  is  asked  of 
tin  Court  or  a  judge  to  serve  a  writ  under  r.  1,  in  Scotland 
or  Ireland,  if  it  shall  iippi  ar  tint  tin  -re  maybe  a  concurrent 
remedy  in  either  country,  the  Court  or  judge  shall  have 
regard  to  the  comparative  cost  and  com.  ni»  -nee  of  proceed- 
ing in  England,  or  in  the  place  of  residence  of  the  person 
sought  to  he  served.  As  to  Scotland,  see  /•'••  7></;7</m/'x 
Trade  Mark  (L.  R.  41  Ch.  D.  542)  ;  M<ir*h<iU  v.  Marshall 
(L.  R.  88  Ch.  D.  830)  ;  and  as  to  Ireland  see  n*«<x/*/.«i-/ 

(  '<>»i])(i>ii/  v.  (.'iinard  Sti-mnxhip  CIUIIJHIIIII  uml  I'tirl.-  1  •  '>  11.  P.  C. 
898). 


By  section  110  of  the  Act  of  1888all  parties  .shall,  notwith- 
standing anything  in  the  Act,  have  in  Ireland  their  remedies 
under  or  in  respect  of  a  patent  as  if  the  same  had  been 
granted  to  extend  to  Ireland  only.  And  by  the  lllth 
section  the  jurisdiction  of  any  court  in  Ireland  in  proceed- 
ings relating  to  patents  is  not  to  be  affected  l>y  the  pro- 
visions of  the  Act  conferring  a  special  jurisdiction  on  the 
Court  as  defined  by  the  Act,  except  so  far  as  the  latter 
jurisdiction  extends  ;  and  with  reference  to  any  such  pro- 
ceedings in  Ireland,  the  terms  '  the  Court  '  and  '  the  Court 
of  Appeal'  respectively  are  to  mean  the  High  Court  of 
Justice  in  Ireland  and  Her  Majesty's  Court  of  Appeal  in 
Ireland. 

ISLE   OF  MAX. 

By  the  112th  section  of  the  Act  of  1883  it  is  enacted  that 
it  shall  extend  to  the  Isle  of  Man,  but  that  nothing  therein 
shall  affect  the  jurisdiction  of  the  Courts  in  the  Isle  of 
Man  in  proceedings  for  infringement,  or  in  any  action 
or  proceeding  respecting  a  patent  competent  to  those 
Courts. 


ACTIONS  FOE  INFRINGEMENTS  297 

COSTS   AND   CERTIFICATES.1 

The  successful  plaintiff  is  entitled  to  his  costs,  unless 
his  conduct  has  been  such  as  to  induce  the  judge  to  deprive 
him  of  them.  (Nunn  v.  Albuquerque,  31  Bea.  595.) 

In  patent  actions  costs  are  usually  allowed  on  the  higher 
scale  (see  E.  S.  C.  0.  LXV.  rr.  8,  9)  on  account  of  the  im- 
portance or  special  nature  and  difficulty  of  the  cases  ;  and 
costs  as  between  solicitor  and  client  are  obtainable  under 
the  31st  section  of  the  Act  of  1883.  (See  post.) 

The  plaintiff  will  not  be  deprived  of  costs  because  he 
did  not  apply  to  the  defendant  before  taking  proceedings 
(Burgess  v.  Hatclcy,  26  Bea.  249  ;  Upmann  v.  Forrester, 
24  Ch.  D.  231),  nor  because  the  defendant  was  unacquainted 
with  the  plaintiff's  rights,  nor  because  he  had  no  intention 
to  do  wrong.  (Burgess  v.  Hills,  26  Bea.  244 ;  Cooper  v. 
Whittingham,  24  Ch.  D.  231.) 

After  judgment  has  been  delivered  the  counsel  on  both 
sides  will  at  once  apply  to  the  judge  for  the  certificates  to 
which  they  may  be  respectively  entitled.  A  reasonable 
time  after  trial  is  sometimes  allowed  to  a  party  for  apply- 
ing on  paying  the  costs  of  the  motion.  (Row cliff e  v.  Morris, 
3  E.  P.  C.  145.) 

No  appeal  lies  from  the  grant  of  a  judge's  certificate,  as 
it  is  not  a  judgment  or  order  within  s.  19  of  the  Judicature 
Act,  1873.  (Haslam  Company  v.  Hall  (2),  5  E.  P.  C.  144.) 

It  is  directed  by  the  sixth  subsection  of  the  twenty- 
ninth  section  of  the  Act  of  1883,  that  on  the  taxation  of 
costs,  regard  shall  be  had  to  the  particulars  delivered  by 
the  plaintiff  and  by  the  defendant,  and  they  respectively 
shall  not  be  allowed  any  costs  in  respect  of  any  particulars 
delivered  by  them,  unless  the  same  is  certified  by  the  Court 
or  a  judge  to  have  been  proven,  or  to  have  been  reason- 
able and  proper,  without  regard  to  the  general  costs  of  the 
case. 

The  taxing  master  has  no  power  without  the  June's 
certificate  to  allow  the  successful  defendant's  costs  of  his 

1  See  the  cases  as  to  costs  collected  in  Mr.  W.  N.  Lawson's  cited  work 
pp.  176-189. 


298  ACTIONS  FOR  INFRINGEMENTS 

particular*  of  objection  which  he  had  not  been  called  D 
to  prove   at    tin-    trial,    ;t^  the  aetimi   had   Keen  dismissed 
(\\ith  11  tlu-  ground  that  tin-  plainti::  '.lionwu 

not  sal >ject- matter.    (/,</m//w/.»m  v.  sl,.i    .  r,  );.  |\  <  .  :,10.) 

Although  a  putt  m   i-  adjudged  to  be  invalid,  and  tin 
plaintiff  has  to  pay  tin-  general  costs  of  the  action,  yet  on 
the  principle  that  parties  ought  not,  even  when  right  in 
the  action,  to  add  to  the  expenses  by  fighting  issu< 
which  they  are  wrong,  the  plaintiff  has  been  held  to  be 
entitled  t<>  the  costs  occasioned  by  the  issues  raised  by  those 
particulars  of  breaches  which  the  defendant  failed  to  prove. 
(]>n<l  ixil/,-  Aiiilin   iiinl  !.<  ihigtfin,  2  R.  P.  C. 

117;  Automatic  \\'<-'njhimj  Machine  ( '»i>i]>aii>/  v.  Kniaht, 
<;  !;.  1'.  C.  i!'.i7  :  (irimn  v.  6  15.  P.  C.  896.) 

Where  a  defendant  not  only  denied  infringement  but 
also  contested  the  validity  of  a  patent,  and  the  result  was 
that  infringement  was  proved,  but  the  patent  was  found  to 
be  invalid,  the  plaintiff  was  held  to  be  entitled  to  the  costs  of 
the  issue  in  respect  of  the  infringement.  (Poo/.  ///»//, 

2  H.  P.  C.  167.)  And  so  when  the  plaintiffs  succeeded  on  a 
distinct  issue,  though  defeated  in  the  action  generally,  they 
were  held  to  be  entitled  to  the  costs  of  that  issue.  (I Hank  v. 
]-'<>.>tinan,  5  R.  P.  C.  661.)  But  on  the  other  hand,  see 
(iiiilh.rt-Martin  v.  Kerr  (4  R.  P.  C.  23);  /-.<<  ^<ran 

<;>mj>anii  v.  7/«.//nm/  (5  R.  P.  C.  488);  Jilal.  flmm 

(6  R.  P.  C.  88). 

The  plaintiffs  sued  for  the  infringement  of  two  patents, 
but  abandoned  one  at  the  trial,  whilst  they  succeeded  on 
the  other.     They  were  ordered  to  pay  such  costs  as 
occasioned  by  their  suing  on  the  abandoned  patent.     / 
imj  v.  l-'raser,  3  R.  P.  C.  7.)     And  so  where  a  plaintiff  sued 
on  three  patents,  but  only  succeeded  on  one,  he  was  din 
to  pay  such  costs  as  had  been  incurred  by  including  the 
other  two  in  the  claim.     (Edison  v.  }\'<><>(Ut<>usc,  8  R.  P.  C. 
178.)  - 

The  proprietors  of  two  patents  having  brought  an  action 
on  each  against  the  same  defendant,  the  judge  allowed  the 
plaintiffs  only  such  costs  as  they  would  have  been  entitled 


ACTIONS  FOR  INFRINGEMENTS  299 

to  had  they  joined  both  patents  in  one  action.  (United 
Telephone  Co.  v.  Sharpies,  2  E.  P.  C.  28.) 

If  a  defendant  raises  issues  which  are  abandoned  at  the 
trial,  the  unsuccessful  plaintiff  is  entitled  to  the  costs  of 
those  issues.  (American  Braided  Wire  Co.  v.  Thomson, 
4  E.  P.  C.  322.) 

Third  parties  who  appeared  in  the  Court  below  and  in 
the  Court  of  Appeal,  although  not  made  defendants,  were 
ordered  to  pay  costs.  (Edison  &  Swan  Co.  v.  Holland, 
6  E.  P.  C.  243.) 

As  to  the  proper  certificates  in  cases  where  judgment  is 
given  at  the  trial  for  the  defendants  who  are  not  called 
upon  to  go  into  their  defence,  see  Germ  Milling  Co.  v. 
Robinson  (3  E.  P.  C.  254) ;  Longbottom  v.  Shaw  (6  E.  P.  C.. 
143). 

At  the  trial  of  an  action  for  infringement,  the  judge 
found  for  the  plaintiff,  but  on  appeal  his  decision  was 
reversed,  and  the  Court  of  Appeal  gave  the  defendant  such 
certificates  as  to  costs  as  ought  to  have  been  given  by  the 
judge  who  tried  the  case,  if  his  decision  had  been  in  con- 
formity with  that  of  the  Court  of  Appeal.  (Humpherson  v. 
Syer,  4  E.  P.  C.  416  ;  Cole  v.  Saqiti,  6  E.  P.  C.  45.  And  see 
Cropper  v.  Smith,  2  E.  P.  C.  61.) 

When  a  patent  case  is  carried  to  the  Court  of  Appeal, 
and  can  there  be  decided  at  once  on  one  short  point,  the 
Court  will  refuse  to  go  on  with  it,  simply  for  the  purpose  of 
ascertaining  how  the  costs  should  be  apportioned  between 
the  parties.  (Longbottom  v.  Shaw,  6  E.  P.  C.  147  ;  Boyd  v. 
Horrocks,  6  E.  P.  C.  162 ;  Blakey  v.  Latham,  6  E.  P.  C. 
190.)  But  sometimes  the  Court  of  Appeal,  on  reversing 
the  judgment  in  the  Court  below,  will  refer  the  case  back 
to  the  judge  who  tried  the  case  to  deal  with  the  question  of 
costs.  (Combined  Weighing  &c.  Co.  v.  Automatic  Weighing 
Machine  Co.,  6  E.  P.  C.  502.) 

The  following  cases  relating  to  certificates  of  proof  of 
particulars  of  breaches  may  be  referred  to :  Young  v.  Ro- 
senthal  (1  E.  P.  C.  41) ;  Germ  Milling  Co.  v.  Robinson 
(3  E.  P.  C.  260) ;  Bray  v.  Gardner  (4  E,  P.  C.  406). 


300  ACT10KS  FOJt   1 

And  as  to  certificates  of  proof  of  partfenlMri  "f  objections, 

>t it h  (2  R.  P.  C.  '  i       / 
(SB.  P.  0.179);  Q*rm  Mill,' 

•_'.-  I    :    i;..thu;ll  v.  Kin.,    c>)    tl   ll.    1'.  '. 

/././//'  <  ;     i   i;.  I1,  c.  M  '       I       M  r,  I 

:   P.  C.  288);    o,/,/,/  v.  N//M/A    .:,   ! 
luMnm  v.  ,s'W  (B  l;.  I1.  (  .  :.<)2). 

By  the  thirty-first  section  of  tin-  Art  of  1883.  it 
enacted  that,  in  an  action  for  infringement  of  a  patent,  the 
Court  or  a  judge  may  certify  that  tin  validity  of  tin-  patent 
came  in  '|iii  stion  ;  an<l  if  the  Court  or  a  judge  so  certifies, 
then  in  any  subsequent  action  for  infringement,  the  plaintiff 
in  that  action,  on  obtaining  a  final  order  or  judgment  in 
his  favour,  shall  have  his  full  costs,  charges,  und  expenses 
as  between  solicitor  and  client,  unless  the  Court  or  judge 
trying  the  action  certifies  that  he  ought  not  to  have  the 
same. 

In  a  case  where  the  defendant  did  not  appear  at  the 
trial,  and  the  plaintiff  had  judgment,  the  judge  refused  t<> 
give  a  certificate  that  the  validity  of  the  patent  had  c 
into  question,  holding  that  the  section  only  applied  when 
the  patent  was  established  in  a  case  contested  in  Court, 
v.  //»/>'«,  1  R.  P.  C.  261.)  On  the  other  hand,  in 
k  v.  liradbitry  (4  R.  P.  C.  74),  the  judge,  under 
similar  circumstances,  pave  the  certificate. 

In  an  action  for  alleged  infringement,  where  the  plaintiff 
proved  the  validity  of  the  patent,  but  failed  to  prove  the 
infringement,  the  judge  gave  the  certificate.  (Aiit'iinati? 
MY/,//m///  Machine  Co.  v.  A* MI/////,  (5  R.  P.  C.  120.) 

Judgment  was  given  for  the  defendant  in  an  action  for 
infringement,  the  patent  being  declared  invalid  by  reason 
of  one  of  the  claims  having  been  anticipated.  The  judge, 
however,  gave  the  plaintiff  a  certificate  that  the  validity  of 
the  patent  had  come  in  question  in  the  action.  (Jlaslam 

v.  Hall,  5  R.  P.  C.  26.) 

Where  the  validity  of  a  patent  was  impeached  on 
grounds  different  from  those  brought  forward  in  a  former 
action,  in  which  its  validity  was  established,  and  the  judge's 


ACTIONS  TOE  INFRINGEMENTS  301 

certificate  to  that  effect  was  obtained,  costs  as  between 
solicitor  and  client  were  refused,  and  costs  on  the  higher 
scale  were  given  to  the  successful  plaintiff  in  the  second 
action.  (Otto  v.  Steel,  3  E.  P.  C.  120.) 

A  certificate  of  validity  is  not  available  in  an  action  by 
the  same  plaintiff  against  another  defendant,  if  it  was 
given  after  the  later  action  was  commenced.  (Automatic 
Weighing  Machine  Co.  v.  International  Hygienic  Society, 
6  E.  P.  C.  475.) 

As  to  other  questions  in  regard  to  costs  as  between  soli- 
citor and  client,  after  the  validity  of  the  patent  has  been 
established  in  a  previous  action,  see  United  Telephone  Co.  v. 
Townslicnd  (3  E.  P.  C.  10)  ;  United  Telephone  Co.  v.  St. 
George  (3  E.  P.  C.  339) ;  United  Telephone  Co.  v.  Patterson 
(6  E'.  P.  C.  140). 

The  Vice-Chancellor  of  the  County  Palatine  of  Lan- 
caster is  not  a  Court  or  judge  within  the  meaning  of  the 
31st  section,  and  cannot  grant  a  certificate  thereunder. 
(Proctor  v.  Sutton  Lodge  Chemical  Co.,  5  E.  P.  C.  184.) 

In  the  case  of  Davenport  v.  Rylands  (L.  E.  1  Eq.  308), 
under  the  corresponding  section  in  the  Act  of  1852,  Sir 
W.  P.  Wood,  V.  C.,  decided  that  a  patentee  who  has  ob- 
tained this  certificate  may  have  his  full  costs  in  any  subse- 
quent action  for  infringement,  although  the  validity  of  the 
patent  may  not  have  been  in  question  in  such  action.  See, 
however,  Automatic  Weighing  Machine  Co.  v.  International 
Hygienic  Society  (6  E,  P.  C.  475). 

As  to  what  is  a  sufficient  certificate  to  enable  the  Court 
to  direct  the  costs  to  be  taxed  as  above  mentioned,  see  Betts 
v.  De  Vitre  (11  Jur.  N.  s.  11),  Bovill  v.  Hadley  (17  C.  B. 
N.  s.  435). 

Other  cases  relating  to  the  certificate  are  Stacker  v. 
Rodgers  (1  C.  &  E.  99) ;  Ball  v.  Lclm  (<  Times,'  April  14, 
1881). 

When  directors  of  a  limited  company  are  active  parties 
in  an  infringement  of  a  patent  by  the  company,  they  may 
be  made  parties  to  a  suit  against  the  company,  and  may  be 
ordered  personally  to  pay  the  costs  of  suit.  (Betts  v.  DC 


A(  VENTS 

1'i/r. .  11  .lur.  N.  s.  :»,  affirmed  on  appeal,  I..  I:.  :i  Ch.  -1*21>. 
See  also  Sjn-na-r  v.  ,4nfoa/«  IV    /  '    .  -    I;.  P.O. 

fiirtln  r  as  t<>  tli«    luxation  of  costs  in  patent  suits, 
Smith  v.  7W//T  (L.  II.    I1.'   l'.|.    173):    1 
(L.  R.  20  Eq.  G8-2);    HV-/,//,///;/   \.   Corcorm    cJT   \V.  N. 
857  - 


ACTIONS  TO  RESTRAIN  A  PATENTEE'S  THREATS      303 


CHAPTER   XIX. 

ACTIONS    TO    RESTRAIN    A   PATENTEE'S    THREATS. 

BY  the  thirty- second  section  of  the  Act  of  1883  it  was 
enacted  that  if  any  person  claiming  to  be  the  patentee  of 
an  invention,  by  circulars,  advertisements,  or  otherwise, 
threatens  any  other  person  with  any  legal  proceedings  or 
liability  in  respect  of  any  alleged  manufacture,  use,  sale,  or 
purchase  of  the  invention,  any  person  or  persons  aggrieved 
thereby  may  bring  an  action  against  him,  and  may  obtain 
an  injunction  against  the  continuance  of  such  threats,  and 
may  recover  such  damage  (if  any)  as  may  have  been  sus- 
tained thereby,  if  the  alleged  manufacture,  use,  sale,  or 
purchase  to  which  the  threats  related  was  not  in  fact  an 
infringement  of  any  legal  rights  of  the  person  making  such 
threats.  But  this  section  is  not  to  apply  if  the  person 
making  such  threats  with  due  diligence  commences  and 
prosecutes  an  action  for  infringement  of  his  patent. 

Previously  to  the  passing  of  this  Act  it  had  been  held 
that  it  was  necessary  to  show  a  want  of  good  faith,  that  is, 
an  absence  of  reasonable  and  probable  cause,  as  well  as  the 
untruth  of  his  assertions,  to  render  a  patentee  liable  for 
threatening  to  take  legal  proceedings.  (Halscy  v.  Brotherhood, 
L.  E.  15  Ch.  D.  514,  and  19  C.  D.  386  ;  Burnett  v.  Tate, 
45  L.  T.  N.  s.  742 ;  Societe  Anonyme  v.  Tilyhman's  Co.,  25 
Ch.  D.  1 ;  Sugg  v.  Bray,  2  E.  P.  C.  223.)  But  now  the 
threatening  patentee  cannot  rely  on  the  absence  of  proof 
of  mala  fides  as  a  good  defence,  unless  by  bringing  and 
diligently  prosecuting  an  action  for  infringement  he  bars 
the  application  of  the  earlier  part  of  the  thirty-second 
section.  Where  a  patentee  did  so,  and  failed  to  support 
the  validity  of  the  patent  at  the  trial,  and  then  the  action 


304     ACTIONS  TO  RESTRAIN    A    I  AT8 

to  rest  ruin  the  i.ssue  of  tin    cirruUn  CfUiit   ..n  for  IK 

at  \\hich   evidence  of  mult   n<l>  *   \\a-   not    forthcoming,  tin- 

jiid^.  .siid,  unless  there  is  plain  (  vi.l.  nc.-  of  malice-  th> 

no  cause  of  action.    The  action  was  th*  seed, 

l.ut  \\ithoutcosts.    (Slinrj,  \.  .  B  I:.  I1.  C.  198.    See 

also  Chall'-ifl-r  v.  ;;,.///,.  j  1;.  r.  <  .  :i71.) 

It  was  at  one  time  supposed  that  in  an  action  for  an 
injunction  to  restrain  threats  under  the  thirty-second  s« 
of    the   Act   the    validity  of   the    threatening    defend 
patent  could  not  be  impeached  ;  hut  it  is  now  settled  that 
the  plaintiff  in  such  an  action  may  j.ro\e,  in  Cither  of  two 
ways,  that  he  has   not   infringed   any  legal  right  of  the 
defendant,    the   person   making  the   threats.      Either   he- 
may  show  that  he  has  not  infringed  a  valid  patent  ;  or  he 
may  prove  that  the  patent  is  invalid,  and  then  fore  that 
he  has  not  infringed  any  legal  right  of  the  defendant.     In 
the  latter  case  the  defendant  is  entitled  to  have  the  same 
notice  of  objections,  and  the  same  right  of  beginning  and 
replying  at  the  trial,  as  if  he  had  been  plaintiff   in  an 
action  for  infringement.     See  ('hull  ml  r  v.  /;«  •///••  1  1  l;.  1'.  (  '. 
863);  Kurtz  v.  St,,-nce  (4  R.  P.  C.    JiiT  :    9.  C.  •>   I!,   i 
161)  ;   //-  /•/•/'//  ;v/,r  v.  Squire  (5  B.  P.  C.  581)  ;  S.  (  '.  on  aj 
(6  B.  P.  C.  164).1 

It  may  be  useful,  perhaps,  to  give  in  a  short  anal 
shape  the  result  of  the  cases  relating  to  actions  to  restrain 
threats  by  a  patentee  brought  by  persons  aggrieved  under 
the  32nd  section  of  the  Act  of  1883. 

(1.)  When  the  patentee  refuses  to  bring  an  action  for 
infringement  :  (a)  if  the  plaintiff  shows  that  the  patent  is 
invalid,  or  that  he  has  not  infringed  it,  he  will  succeed, 
without  regard  to  the  question  of  the  patentee's  bona  fides 
in  making  the  threats.  (Kurt:  v.  >'/»«•//«•/-,  5  R.  P.  C.  161  ; 
iiiirc,  5  B.  P.  C.  581.)  But  (b)  if  it  is 


1  Besides  the  cases  cited,  the  following  have  a  bearing  upon  minor  point- 
in  actions  under  the  thirty-second  section  :  Union  Electrical  Power  and 
Light  Co.  v.  Electrical  Power  Storage  Co.  (5  R.  P.  C.  329)  ;  Colley  v.  Hart 
(6  B.  P.  C.  17  ;  7  R.  P.  C.  101). 


ACTIONS  TO  RESTRAIN  A  PATENTEE'S  THREATS       305 

shown  at  the  trial  that  the  patent  is  valid,  and  that  it  has 
been  infringed,  the  plaintiff  in  the  threat  action  will  fail. 
(Crampton  v.  Patents  Investment  Co.,  5  E.  P.  C.  382.) 

(2.)  When  the  patentee  brings  an  action  for  infringe- 
ment, and  (a)  succeeds  at  the  trial  in  showing  the  validity 
of  his  patent  and  its  infringement,  the  action  for  threats 
will  be  decided  in  his  favour  (Automatic  Weighing  Machine 
Co.  v.  Combined  Weighing  Machine  Co.,  6  E.  P.  C.  121)  ; 
and  (b)  even  if  the  patentee  fails  to  establish  the  validity 
of  his  patent,  or  the  fact  of  its  infringement,  he  will  still 
not  be  liable  in  the  threat  action  unless  absence  of  bona 
fides  is  shown  (as  before  the  Act  of  1883).  Sharp  v.  Braucr 
(3  E.  P.  C.  193) ;  Combined  Weighing  d-c.  Co.  v.  Automatic  d-c. 
Co.  (6  E.  P.  C.  502)  ;  Colley  v.  Hart  (7  E.  P.  C.  101). 

Threats. — The  first  question  to  be  considered  is,  has  a 
patentee  threatened  legal  proceedings  within  the  meaning 
of  the  words  '  circulars,  advertisements,  or  otherwise  ?  '  A 
letter  from  the  patentee's  solicitor  may  be  a  threat  for 
which  the  aggrieved  person  may  proceed  against  the  client. 
(Driffield  Ac.  Co.  v.  Waterlow  &  Co.,  3  E.  P.  C.  46  ;  Crampton 
\.  Patents  Investment  Co.,  5  E.  P.  C.  393 ;  Combined  Weighing 
d-c.  Co.  v.  Automatic  dc.  Co.,  6  E.  P.  C.  506.)  See,  how- 
ever, remarks  of  North,  J.,  Barrett  v.  Day  (7  E.  P.  C.  54). 

Notices  by  letters  addressed  by  a  patentee  to  persons 
who  were  using  an  invention  of  the  plaintiff,  and  so  framed 
as  to  lead  people  to  believe  that  the  patentee  was  complain- 
ing of  the  plaintiff's  invention  as  being  an  infringement  of 
the  patent,  were  held  to  be  threats  within  the  meaning  of 
the  section.  (Burt  v.  Morgan,  4  E.  P.  C.  278.)  Then  letters 
written  '  without  prejudice '  may  contain  threats  within  the 
section.  (Kurtz  v.  Spence,  5  E.  P.  C.  173.)  Also  a  private 
letter  written  by  the  patentee  to  a  customer  of  the  plaintiff. 
(Walker  v.  Clarke,  4  E.  P.  C.  111.) 

Pending  an  action  for  infringement,  the  plaintiff  has  no 
right  to  advertise  a  positive  statement  that  the  defendant 
has  infringed,  and  he  may  be  restrained  if  he  does  so 
advertise.  (Gaulard  v.  Lindsay,  4  E.  P.  C.  189.) 

But  quare  whether  mere  warnings  to  the  public  in 

x 


306       ACTIONS  TO  RESTRAIN   A   PATENTEE'S  THREATS 

respect  of  the  future  are  threats  within  the  meaning  of  the 
section.     (Cluill.  •«././•  v.  Rofb,  ll;.  i' 

The  judges  sitting  ///  lane  refused  an  injunction  to  re- 
strain a  patentee  from  sending  out  circulars  containing  a 
verbatim  report  copied  from  a  newspaper  of  th<-  trial  of  an 
action  for  tin-  infringement  of  bis  patent,  th«  trial  having 
terminated  in  his  favour,  and  the  applicants  for  the  injunc- 
tion 1>«  ing  the  defendants  in  the  action,  dl-nin-nnl  \.  Ifamil- 

•  Engineer/  vol.  xlviii.  p.  l'28;  S.  ( '.,  1  Griffin  P.  C.  115.) 
Injnin'tiniix. — An   interlocutory  injunction 
to  restrain  threats  must  not  be  moved  for  .     Notice 

of  motion  must  be  given  in  the  iv-jular  way. 
Church  1'Inniiif'riii'i  <  ....  2  R.  P.  C.  175.)     An  interlocutory 
injunction  was  refused  when  the  defendant,  i  ntee, 

undertook  to  proceed  with   due   diligence  with  an  action 
against  the  plaintiff  for  an  infringement  of  the  patent,  but 
was  afterwards  granted  on  his  neglecting  to  perform  the 
undertaking.    -  Him*  fcoU  v.  F.iirhitnt,  1.  R.  P.C.  Id' 
2  R.  P.  C.  140.)     A  motion  for  an  interlocutory  injunction 
to  restrain  the  circulation  of  circulars  issued  by  limited 
licensees  was  ordered  to  stand  over  until  after  the  trial  of 
an  action  for  infringement  brought  by  a  patentee  against 
the  plaintiffs  in  the  action  for  an  injunction.    (liarn- 
llnn-ftlx  Co.,  1  R.  P.  C.  9,  and  see  Cnmlin>-il  U'>-i;ihin 
<     .  v.  Aiitnnmtir  l\',-i:ihin;i  Machine  Co.,  6  R.  P.  C.  504.) 

Where  a  plaintiff,  pending  an  action  brought  l»y  him  for 
an  infringement,  has  obtained  leave  from  the  Court  to 
amend,  but  has  not  yet  amended,  his  specification  by  dis- 
claimer, he  will  not  be  allowed  to  issue  circulars  threatening 
the  customers  of  the  defendant  with  legal  proceedings,  and 
the  defendant  in  the  action  for  infringement  may  move 
for  an  injunction  to  restrain  the  issue  of  the  circulars. 
(Fusee  Vesta  Co.  v.  Bryant  .(  M.III,  4  R.  P.  C.  191.) 

In  granting  or  refusing  an  interlocutory  injunction  the 
Court  will  consider  not  only  the  balance  of  convenience  and 
inconvenience  between  the  parties  litigant,  but  also  whether 
the  plaintiff  has  made  out  a  prinui- facie  case,  so  as  to  make 
it  seem  probable  that  at  the  hearing  of  the  action  for  threats 


ACTIONS   TO   KESTKAIN   A  PATENTEE'S   THREATS      307 

he  will  get  a  decree  in  his  favour  on  the  questions  of  in- 
fringement and,  if  raised,  the  validity  of  the  patent.  (Chal- 
lender  v.  Roylc,  4  E.  P.  C.  372;  see  also  Barney  v.  United 
Telephone  Co.,  2  E.  P.  C.  173.) 

The  Proviso  at  the  end  of  the  thirty- second  section  of 
the  Patents  Act  of  1883  declares  that  the  section  is  not  to 
apply  if  the  person  making  the  threats  with  due  diligence 
commences  and  prosecutes  an  action  for  infringement  of  his 
patent.     It  is  not  required  that  the  action  for  infringement 
should  be  brought  against  the  aggrieved  person,  that  is,  the 
person  apply  ing  for  an  injunction  to  restrain  threats.    '  An 
action  will  satisfy  the  words  of  the  proviso  if  it  is  a  bond- 
fide  action  brought  with  due  diligence  and  without  collusion 
against  a  person  to  whom  threats  have  been  addressed  in 
respect  of  the  act  to  which  the  threat  referred.'   Per  LL.  JJ. 
Cotton  and  Boicen,  in  Challcnderv.  Royle  (4  E.  P.  C.  373-5). 
But  it  was  held  by  Mr.  Justice  Kekewich,  in  The  Combined 
Weighing  cC-c.  Co.  v.  The  Automatic  Weighing  Machine  Co. 
(6  E.  P.  C.  507)  that  in  order  to  meet  the  exigency  of  the 
proviso,  the  patentee,  if  he  does  not  sue  the  person  who  has 
brought  an  action  to  restrain  threats,  must  sue  a  person 
who  has  committed  an  infringement  of  the  same  character 
as  the  infringement  alleged  to  have  been  committed  by  the 
plaintiff  in  the  threat  action.     It  will  not  do  to  bring  the 
action  for  infringement  against  a  man  who  is  infringing  the 
patent  in  an  entirely  different  way  from  that  alleged  to  have 
been  adopted  by  the  man  who  is  sueing  for  threats.     With 
respect  to  the  words  '  due  diligence,'  they  will  be  interpreted 
with  reference  to  the  time  when  the  threats  were  made,  not 
with  reference  to  the  time  when  the  patentee  had  notice  of 
what  the  alleged  infringer  was  doing.     Threats  being  made 
in  March,  and  an  action  for  infringement  having  been  com- 
menced in  May,  that  was  held  to  be  due  diligence.     (Chal- 
lender  v.  Royle,  4  E.  P.  C.  376,  372.)     And  see  Combined 
Weighing   &c.    Co.   v.    Automatic    Weighing    Machine    Co. 
(6  E.  P.  C.  508) ;  Colley  v.  Hart  (6  Times  E.  212).     For  a 
case  in  which  due  diligence  was  not  displayed,  see  Herrburger 
v.  Squire  (5  E.  P.  C.  594). 

x  2 


ACTIONS  TO  RESTRAIN  A   I'ATKXTEfc-8  THRKATS 

\Vln-ii   a   threatened   action  for  infringement   is  com- 
IIH  need  and  prosecuted  \\itli  due  diligence  after  l) 

is  no  ground  upon  which  an  action  in  respect  of  such 
it  can  subsequently  he  commenced  undo  the  section. 
r.ttv.Day,!  1;.  L)  An  ;irti..n  |.\  u  patentee 

against  licensees,  claiming  royalties  in  resnt-rt  <>f  art 
\\hu-li  the  licensees  allege  are  made  under  anntli. 
and  not  under  tin-  1!  ^  an  action  for  infringement 

within  the  proviso.     (See  Barrett  v.  />•///,  fit-  d  al- 
Damayes. — \Yln  n-   no  special  damage  was   ] 
suggested,  forty  shillings  damages  were  awarded. 
Spcnce,  6  R.  P.  C.  17 

>•(//-•   ,,;    }',iliility. — In  an  action    to    restrain  n 

•i toe's  threats,  where  the  validity  of  the  patent  came 

into  question  and  was  upheld,  the  judge  gave  a  certificate  to 

that  effect  under  the  thirty-first  section  of  the  Aet  of  1888, 

but  expressed  great  doubt  whether  he  had  jurisdiction  to 

grant  it.      (Cram}>t»n  v.  l\it<-nt*   Inr>'stin<-nt   Co.,  5  R.  I'.  <  . 

404.)  In  another  action  to  restrain  threats,  another  judge 
held  that  he  had  no  power  to  give  such  a  certificate.  \J\»rt: 
v.  ,x>-mv,  5  R.  P.  C.  184.) 

x. — When  an  action  for  infringement  is  brought  by 
a  patentee  after  proceedings  to  restrain  threats  have  been 
taken  against  him,  the  parties  ought  to  come  to  some 
arrangement,  so  as  not  to  incur  unnecessary  costs  by  trying 
tw<>  actions  about  the  same  facts.  (Court  of  Appeal :  . ' 
viatic  Wi'i'ihiii'i  Machine  Co.  V.  Coinl'iiml  }]'•  i:iliin:i  Machinr 
('».,  6  R.  P.  C.  867.  See  also  Combined  W«<jhin<i  d-c.  Co. 
v.  Automatic  H V/;//* in.'/  Machine  Co.,  6  R.  P.  C.  509.) 


THE  REVOCATION  OF  PATENTS          309 


CHAPTEE  XX. 

THE    REVOCATION    OF    PATENTS. 

THE  old  action  of  scire  facias,  which  was  one  brought  in 
the  name  of  the  Crown  for  the  purpose  of  repealing  a  grant 
of  letters  patent,  has  been  abolished,  so  far  as  patents  for 
inventions  are  concerned,  by  the  twenty-sixth  section  of 
the  Patents  Act  of  1883.  By  that  section  it  is  enacted  that 
the  revocation  of  a  patent  may  be  obtained  on  petition  to 
the  Court,  and  that  every  ground  on  which  a  patent  might, 
at  the  commencement  of  the  Act,  be  repealed  by  scire 
facias  shall  be  available  by  way  of  defence  to  an  action  of 
infringement,  and  shall  also  be  a  ground  of  revocation. 

Previous  to  the  Act  of  1883,  if  two  patents  had  been 
issued  to  different  persons  for  the  same  invention,  the  first 
patentee  could  have  brought  an  action  of  sci.  fa.  to  repeal 
the  second  patent.  (R.  v.  Neilson,  1  W.  P.  C.  671.)  And 
where  there  had  been  a  false  suggestion,  such  as  was  in- 
volved in  a  want  of  novelty  or  utility  in  the  invention,  the 
patent  could  have  been  repealed  by  the  same  proceedings. 
Fraud,  non-compliance  with  the  conditions  of  the  letters 
patent,  such  as  filing  an  insufficient  specification  (Rex  v. 
Arkicright,  1  W.  P.  C.  66),  and  the  fact  that  the  invention 
was  not  a  patentable  one  (R.  v.  Cutler,  Macr.  P.  C.  124), 
were  also  grounds  for  the  action  of  sci.  fa.,  and  are  still 
therefore  available  as  grounds  of  revocation. 

In  the  case  of  Gaulard  d  Gills'  Patent  (6  K.  P.  C.  225), 
the  patent  was  held  bad  on  the  grounds  that  there  was 
disconformity  between  the  specification  as  amended  and  the 
provisional  specification,  and  that  the  scope  of  the  invention 
had  been  extended. 

The  fact  that  a  patent  includes  more  than  one  invention, 


310  TIIK   INVOCATION   Q  NTS 

contrary  to  the  direction  in  section  83,  would  seem  not  to 
be  a  ground  of  revocation,  since  the  name  section  declares 
thut  '  it  shall  not  be  competent  for  uny  person  in  an  a 
or  other  proceeding  to  take  any  <>)>j.  <  tion  to  a  patent  on  the 
ground  that  it  comprises  more  than  one  invcnti-n.' 

A  petition  for  the  revocation  of  a  patent  may  be  ] 
sented  by  (a)  the  Attorne  ;il  in  England  or 

or  by  the  Lord  Advocate  in  Scotland  :  (/'>  any  person  autho- 
rised by  these  law  officers ;  (<•)  any  person  alleging  that  the 
it  was  ol  it  aim  (1  in  fraud  of  his  rights,  or  of  the  rights 
of  any  person  under  or  through  whom  he  claims ;  (d)  any 
"ii  alle^'in^  that  he.  or  any  person  under  or  through 
whom  he  claims,  was  the  tru«  in\vnt"r  (»f  any  inv« : 
Jin-hided  in  tin-  patentee's  claim;  (<•)  any  person  all* 
that  he,  or  any  person  under  or  through  whom  he  claims 
an  interest  in  any  trade,  business,  or  manufacture,  had 
puhlk-ly  manufactured,  used,  or  sold  within  this  realm 
before  the  date  of  the  patent  anything  claimed  by  the 
pat* ntee  as  his  invention.  That  is  to  say,  the  persons  who, 
in  addition  to  the  law  officers  and  those  whom  they  autho- 
rise, may  present  a  petition  for  the  revocation  of  a  \>. 
are  persons  who  allege  that  they  have  been  defrauded  by 
th»  grant;  or  those  who  claim  to  be  the  true  inventors  of 
the  patented  invention  ;  or  those  who  set  up  anterior  puhlic 
user  by  themselves,  or  by  persons  through  whom  they 
claim.  Before  a  petition  can  be  presented  on  the  ground 
of  prior  user  by  other  persons  it  will  l>e  necessary  to  obtain 
the  authority  of  a  law  officer. 

A  petition  cannot  be  presented  by  an  agent,  although 
authorised  by  a  power  of  attorney.        i        '     / 
II.  1'.  C.  152;  S.  C.  on  Appeal,  4  R.  P.  C.  322.)     And  all 
persons  beneficially  interested  in  the  patent  must  be  made 
respondents.      x.  '  . 

Along  with  his  petition  the  plaintiff  will  have  to  del! 
particulars  of  his  objections  to  the  patent,  and  no  evidence 
will  be  admitted  at  the  trial  in  proof  of  any  objection  not 
included  in  such  particulars,  except  by  leave  of  the  Court 
or  of  a  judge ;  but  the  particulars  delivered  may  be  from 


THE  REVOCATION  OF  PATENTS          311 

time  to  time  amended  by  leave  of  the  Court  or  of  a  judge. 
The  proceedings  at  the  trial  will  be  similar  to  the  proceed- 
ings in  actions  when  the  validity  of  a  patent  is  in  dispute. 
The  defendant  is  entitled  to  begin  and  give  evidence  in 
support  of  the  patent ;  and  if  the  plaintiff  gives  evidence 
impeaching  the  validity  of  the  patent,  the  defendant  is 
entitled  to  reply.  (Sub-ss.  5,  6,  7,  sect.  26,  of  the  Act  of 
1883.) 

By  the  nineteenth  section  of  the  Act  of  1883,  the  Court 
or  a  judge  may,  in  a  proceeding  for  the  revocation  of  a 
patent,  order  at  any  time  that  the  patentee  shall,  subject 
to  such  terms  as  to  costs  or  otherwise  as  the  Court  or  a 
judge  may  impose,  be  at  liberty  to  apply  at  the  Patent 
Office  for  leave  to  amend  his  specification  by  way  of  dis- 
claimer, and  may  direct  that  in  the  meantime  the  trial  or 
hearing  of  the  action  shall  be  postponed. 

Leave  to  disclaim  after  presentation  of  the  petition  was 
given  to  the  patentee  upon  the  terms  of  his  paying  all  costs 
and  undertaking  to  apply  forthwith  for  the  disclaimer  and 
prosecute  the  application  with  diligence.  (Ganlard  &  Gibbs' 
Patent,  5  E.  P.  C.  189.) 

By  the  twenty-eighth  section  of  the  Act  the  Court  in 
any  proceeding  for  the  revocation  of  a  patent  may,  if  it 
thinks  fit,  and  shall,  on  the  request  of  either  of  the  parties, 
call  in  the  aid  of  an  assessor  specially  qualified,  and  try  and 
hear  the  case  wholly  or  partially  with  his  assistance.  The 
case  shall  be  tried  without  a  jury  unless  the  Court  shall 
otherwise  direct. 

The  following  cases  have  been  decided  by  the  Courts 
upon  subsection  4  of  section  26  in  the  Act  of  1883. 

In  construing  clause  (<•)  the  word  fraud  must  be  con- 
fined to  grave  moral  culpability,  and  ought  not  to  be 
extended  to  honest  mistakes,  although  the  real  inventor 
may  have  suffered  injury.  (Arery's  Patent,  4  E.  P.  C.  322.) 

Cases  of  alleged  prior  user  under  clause  (<?).  (Walker 
v.  Hydrocarbon  Syndicate,  2  E.  P.  C.  3 ;  Haddan's  Patent, 
2  E.  P.  C.  218.) 

A  person  who  presents  a  petition  for  a  revocation  under 


THE  REVOCATION  OF  PATENTS 

clauses  (r),  (</),  or   (<•)  is  entitled  at  the  I  after 

pro\inn  his  ri^ht  to  present  tin-  petition,  to  imp-  -a«  h   tin* 
patent  on  any  other  lawful  ground.      (M  '•'«', 

:.  i;.  I1,  t  .  i 

\\iiere  a  patent  has  been  revoked  on  the  ground  of 
fraud,  the  Comptroller  is  authorised  by  the  t\\<  nty-.-i\th 
section  of  the  new  Act.  on  the  application  of  tin-  true 
inventor,  made  in  accordance  \\ii\\  tin-  pi"\  i-ions  of  the  Ad. 
to  grant  him  a  patent  in  licit  of  the  r.\ok«d  patent.  The 
new  patent  is  to  ha  date  as  the  date  of  the 

revocation,  hut  i.-  tin-  »  ml  of  the  term  for  which 

the  revoked  patent  was  granted. 

\\lnre  tin  C'ourt  has  made  an  order  for  the  revo< 
of  a  patent,  an  office  copy  thereof  mu>t  hi-  left  at  the  Patent 
Office,  that  an  entry  may  he  made  in  the  Register.   (Hi, 
of  Patents  Rules,  1890.) 

In  Scotland,  proceedings  for  the  revocation  of  a  patent 
are  directed  by  the  109th  section  of  the  Act  to  be  in  the 
form  of  an  action  of  reduction  at  the  instance  of  the  Lord 
Advocate,  or  at  the  instance  of  a  party  having  interest  with 
his  concurrence,  which  concurrence  may  be  given  on  just 
cause  shown  only.  Service  of  all  writs  and  summonses  in 
that  action  are  to  be  made  according  to  the  forms  and 
practice  existing  at  the  commencement  of  the  Act. 

In  Ireland,  by  section  110,  all  parties  are  to  have  their 
remedies  under  or  in  respect  of  a  patent  as  if  the  same  had 
been  granted  to  extend  to  Ireland  only. 

There  is  no  provision  in  the  Act  for  service  out  of  the 
jurisdiction  of  petitions  for  revocation.  Where,  however,  tin- 
patentee  was  resident  and  domiciled  in  Scotland,  and  there 
•was  evidence  that  a  copy  of  the  petition  and  objections  had 
been  delivered  to  him  in  Scotland,  and  that  he  had  written  to 
the  petitioner's  solicitors  that  he  did  not  intend  to  appear 
at  the  hearing  because  he  was  not  subject  to  the  jurisdiction 
of  the  English  Courts,  an  order  nisi  was  made  (on  the 
petitioners  applying  for  directions  as  to  the  mode  of  trial) 
that  unless  the  patentee  should  appear  before  a  day  named 
the  petition  should  be  tried  by  rird-vocc  evidence ;  but  if 


THE  REVOCATION  OF  PATENTS          313 

the  respondent  appeared  it  was  to  be  open  to  him  to  dis- 
pute the  jurisdiction.  (Driimmond's  Patent,  6  E.  P.  C.  576.) 

COSTS. 

The  Act  of  1883  is  silent  as  to  costs,  but  the  Courts 
under  their  general  jurisdiction  award  costs  to  the  petitioner 
when  the  patent  is  revoked.  (Haddan's  Patent,  2  E.  P.  C. 
218  ;  Edmonds'  Patent,  6  E.  P.  C.  358.) 

At  the  hearing  of  a  petition  for  revocation  the  judge 
thought  that  he  had  no  power  to  give  a  certificate  as  to 
proof  of  the  particulars  of  objections  under  the  twenty-ninth 
section,  subsection  6,  of  the  Act  of  1883.  (Gaulard  d-  Gills' 
Patent,  5  E.  P.  C.  537.) 


314  OFFENCES  AND  T1IEIB  PENALTIES 


<  HAPTER    XXI. 

OFFKXCKS    AXI>    TIII-II;    IKNALTUCg. 

Tin:  only  penalti«  -  imposed  b)f  the  Act  of  1888  are  those 
:•  the  offences  set  forth  in  the  lo.'.th  and  106th 
>ns.  By  tin  lo.'th  htc-tion  it  is  enacted  that  any 
person  who  represents  that  any  article  sold  l>y  him  is  a 
patt ntetl  artii-K'  when  no  patent  has  been  granted  for  tin- 
same  .  .  .  shall  he  liable  for  every  offence  on  summary 
conviction  to  a  fine  not  exceeding  .">/.  And  further,  that  a 
person  shall  be  deemed  for  the  purposes  of  the  enactment 
to  represent  that  an  artirlr  is  patented  ...  if  he  sells  the 
article  with  the  word  '  patent,'  '  patented/  or  any  word  or 
words  expressing  or  implying  that  a  patent  has  been  ob- 
tained for  the  article  stamped,  engraved,  or  impressed  on  or 
otherwise  applied  to  the  article. 

According  to  the  case  of  Chravin  v.  U'nlb-r  (L.  R.  5  Ch. 
D.  862),  the  use  of  the  word  '  Patent,1  along  with  a  r« 
sentation  of  the  royal  arms  as  a  label  on  an  article  made 
according  to  an  invention  for  which  the  patent  has  expin  <1, 
was  considered  to  be  a  representation  that  the  patent  was 
still  subsisting,  and  was  held  to  disentitle  the  plaintiff  from 
obtaining  an  injunction  to  restrain  the  wrongful  use  of  the 
label.  The  plea  of  its  being  a  trade-mark  was  not  allowed 
to  be  set  up.  '  It  is  impossible  *  (said  Sir  G.  Jesscl,  M. 
*  to  allow  a  man  who  has  once  had  the  protection  of  a  patent 
to  obtain  a  further  protection  by  using  the  name  of  his 
patent  as  a  trade-mark.  No  man  can  claim  a  trade-mark 
in  a  falsehood.  It  is  a  falsehood  in  representing  the  patent 
as  still  subsisting/  See  also  the  L'nml,  >nn  Manufacturing 
Co.  v.  Xtiirn  (L.  R.  7  Ch.  D.  834). 

By  the  second  section  of  the  Merchandise  Marks  Act, 


OFFENCES  AND  THEIR  PENALTIES  315 

1887  (50  &  51  Viet.  c.  28),  every  person  who  (1  d)  applies 
any  false  trade  description  to  goods,  and  (2)  every  person 
who  sells  or  exposes  for,  or  has  in  his  possession  for,  sale 
or  any  purpose  of  trade  or  manufacture,  any  goods  or  things 
to  which  any  .  .  .  false  trade  description  is  applied,  shall 
be  guilty  of  an  offence  against  that  Act,  unless  he  proves 
that  ...  he  had  at  the  time  of  the  commission  of  the 
alleged  offence  no  reason  to  suspect  the  genuineness  of  the 
trade  description,  and  that  on  the  prosecutor's  demand  he 
gave  all  the  information  in  his  power  with  respect  to  the 
persons  from  whom  he  obtained  such  goods  or  things,  or 
that  otherwise  he  had  acted  innocently.  By  the  third 
section  (1)  of  the  same  Act  the  expression  '  trade  descrip- 
tion '  means  any  description,  statement,  or  other  indication, 
direct  or  indirect,  (c)  as  to  any  goods  being  the  subject  of 
an  existing  patent;  and  the  use  of  any  figure,  word,  or 
mark  which,  according  to  the  custom  of  the  trade,  is  com- 
monly taken  to  be  an  indication  of  the  above  matter,  shall 
be  deemed  a  trade  description  within  the  meaning  of  the 
Act.  The  expression  '  false  trade  description  '  means  a 
trade  description  which  is  false  in  a  material  respect  as 
regards  the  goods  to  which  it  is  applied.  Persons  found 
guilty  of  an  offence  against  the  said  Act  are  liable  to  fine 
and  imprisonment  and  to  forfeit  any  article  in  relation  to 
which  the  offence  has  been  committed.  (Sect.  2,  c.) 

In  the  case  of  Gridley  v.  Sicinborne  (5  Times  E. 
91),  it  was  held  that  the  sale  of  packets  of  gelatine  which 
were  marked  with  the  royal  arms  and  bore  the  words 
*  Under  Eoyal  Letters  Patent.  Swinborne's  Patent  Eefined 
Isinglass,'  was  not  an  offence  under  the  second  section  of 
the  Merchandise  Marks  Act  of  1887  when  there  had  been  a 
patent  for  the  manufacture  of  the  article,  but  which  patent 
had  expired  many  years  previously.  Since  no  proceedings 
were  taken  under  sections  105  and  106  of  the  Patents  Act 
of  1883,  it  seems  to  have  been  conceded  that  no  offence 
had  been  committed  under  those  sections. 

To  avoid  all  difficulty  in  cases  of  this  kind,  and  to  rebut 
any  possible  charge  of  fraud,  manufacturers  would  do  well 


316  OFFENCES  AND  THEIR  PENALTIES 

to  add  tin  nmnbt  r  ;nul  date  of  the  patent  to  the  mark  or 
label 

art  that  a  provisional  specification  has  been  lodged 
at  the  Patent  Office  does  not  justify  the  use  of  the  word 

nt  '  a>  a  label  upon  aitirl.  -  made  according  to  tl 
v.  ntion  until  a  patent  has  been  obtained.     <  / 
n'rtWx,  :\  l\.  P.  c.  1 ;  Tl  i>t"n,  :\  I;,  i 

By  the  106th  section  of  the  A.  t  of  1883  it  is  enacted  that 
any  person  who,  without  the  authority  of  her  Majesty  or  any 
of  the  Royal  Family  or  of  any  Government  Departn. 
assumes  or  uses  in  connection  with  any  trade,  business, 
calling,  or  profession  the  royal  arms,  or  arms  so  nearly 
resembling  the  same  as  to  be  calculated  to  deceive,  in 
a  manner  as  to  be  calculated  to  lead  other  persons  to  be '. 
that  he  is  carrying  on  his  trade,  business,  calling,  or  profes- 
sion, by  or  under  such  authority  as  aforesaid,  shall  !•••  lial>lr, 
on  summary  conviction,  to  a  fine  not  exceeding  20/. 

Many  persons  engaged  in  business  have  been  accustomed 
to  make  use  of  the  royal  arms  in  one  way  or  anoth<  i ,  and 
if  they  continue  to  do  so  they  should  IK?  careful  not  to  bring 
themselves  within  the  purview  of  this  section. 

By  the  first  section  of  the  Act  of  1888  it  is  enacted  that 
any  person  describing  himself  to  be  a  Patent  Agent  when 
he  is  not  on  the  register  is  liable  on  summary  conviction  to 
a  penalty  of  20J.  (See  Chapter  XXIV.,  '  On  the  Institute 
of  Patent  Agents.') 

In  Scotland  any  offence  under  the  Act  of  1883  declared 
to  be  punishable  on  summary  conviction  may  be  prosecuted 
in  the  Sheriff's  Court.  (Sect.  108.)  In  the  Isle  of  Man  any 
offence  under  the  Act  which  would  in  England  be  punishable 
on  summary  conviction  may  l>e  prosecuted,  and  any  fine  in 
respect  thereof  recovered  at  the  instance  of  the  person 
aggrieved,  in  the  manner  in  which  offences  punishable  on 
summary  conviction  may  for  the  time  being  be  prosecuted. 
(Sect.  112,  subsect.  3.) 

The  ninety-third  section  of  the  Act  of  1883  enacts  that 
if  any  person  makes  or  causes  to  be  made  a  false  entry  in 


OFFENCES  AND  THEIR  PENALTIES  317 

any  Kegister  kept  under  the  Act,  or  a  writing  falsely  pur- 
porting to  be  a  copy  of  an  entry  in  any  such  register,  or 
produces  or  tenders,  or  causes  to  be  produced  or  tendered,  in 
evidence,  any  such  writing,  knowing  the  entry  or  writing  to 
be  false,  he  shall  be  guilty  of  a  misdemeanor. 

In  the  Isle  of  Man  the  punishment  for  a  misdemeanor 
under  the  Act  is  imprisonment  for  any  term  not  exceeding 
two  years,  with  or  without  hard  labour,  and  with  or  without 
a  fine  not  exceeding  100?.  at  the  discretion  of  the  Court. 
(Sect.  112,  subsect.  2.) 


NATIONAL 


CHAPTKi:    \\II. 

INTERNATIONAL   AND   COLONIAL   ARRANGEMENTS. 

International  .  [rraiujc incuts* 

IT  is  enacted  by  the  103rd  section  of  t !  t  of  1883 

that,  if  the  Crown  should  mak.  uiiy  arran^-iiK-nt  with  the 
rnment  or  Governments  of  any  fun  i^n  state  or  states 
for  the  mutual  protection  of  inventions,  then  any  person 
who  has  applied  for  protection  for  any  invention  in  any 
such  state  shall  be  entitled  to  a  patent  for  his  invention 
under  the  Act  in  priority  to  other  applicants,  and  sin  h 
patent  shall  have  the  same  date  as  the  date  of  the  applica- 
tion  in  euch  foreign  state.  But  the  application  must  be 
made  in  this  country  in  the  same  manner  as  an  ordinary 
application  under  the  Act,  and  within  M-\VH  months  from 
the  date  of  the  application  for  protection  in  the  foreign 
state.  A  patentee  under  this  section  will  not  be  allowed  to 
ver  damages  for  infringements  happening  prior  to  tin- 
date  of  the  actual  acceptance  of  his  complete  specification 
in  this  country.  By  the  second  subsection  of  the  same 
section  it  is  enacted  that  the  publication  in  th>  '  •  i 
Kingdom  or  the  Isle  of  Man,  during  the  said  period  of  :-• 
months,  of  any  description  of  the  invention,  or  the  use 
tli.  rein  during  the  said  period  of  the  invention,  shall  not 
invalidate  the  patent  which  may  be  granted  for  the 
invention. 

Thm  by  the  fourth  subsection  it  is  directed  that  these 
provisions  are  only  to  apply  to  those  foreign  states  with 
respect  to  which  Her  Majesty  shall  from  time  to  time  by 
<  )nler  in  Council  declare  them  to  be  applicable,  and  so  long 
only  in  the  case  of  each  state  as  the  Order  in  CounciTshall 
continue  in  force  with  respect  to  that  state. 


INTERNATIONAL  ARRANGEMENTS  319 

On  March  20,  1883,  a  Convention  was  signed  by  repre- 
sentatives of  various  Governments,  which  was  afterwards 
ratified  by  these  Governments.  Other  Governments  after- 
wards joined  the  Convention,  and  at  the  present  time  it 
exists  between  the  following  states :  Belgium,  Brazil,  France, 
Great  Britain,  Guatemala,  Holland  and  its  Indian  Colo- 
nies, Italy,  Mexico,  Norway,  Portugal,  Servia,  Spain, 
Sweden,  Switzerland,  Tunis,  United  States.  By  the  first 
article  of  this  Convention  it  was  declared  that  the  said 
states  formed  themselves  into  a  Union  for  the  Protection  oj 
Industrial  Property,  which  words  were  (according  to  the 
Protocol  accompanying  the  Convention,1  and  having  the 
same  force,  validity,  and  duration  as  the  Convention  itself) 
to  be  understood  in  their  broadest  sense,  and  to  be  applicable 
not  only  to  industrial  products  properly  so  called,  but  also 
to  agricultural  products  (wines,  corn,  fruits,  cattle,  &c.) 
and  to  mineral  products  employed  in  commerce  (mineral 
waters,  &c.).  It  may  here  be  remarked  that  neither  agri- 
cultural products  nor  mineral  products  are  patentable  in  this 
country. 

By  the  second  article  of  the  Convention  the  subjects  or 
citizens  of  each  of  the  contracting  states  are  to  enjoy  in  all 
the  other  states  of  the  Union  the  same  advantages  as  re- 
gards patents  of  every  kind  (see  the  second  paragraph  of 
the  Protocol)  that  their  respective  laws  grant  to  their  own 
subjects  or  citizens.  They  are  to  have  the  same  protection 
and  the  same  legal  '  recourse '  [i.e.  remedies]  on  any  in- 
fringement of  their  rights,  provided  they  observe  the  form- 
alities and  conditions  imposed  on  subjects  or  citizens  by  the 
internal  legislation  [i.e.  laws]  of  each  state.  With  regard 
to  this  clause  the  third  paragraph  of  the  Protocol  explains 
that  it  is  not  to  affect  the  legislation  [i.e.  laws]  of  the  con- 
tracting states  relating  to  legal  procedure,  jurisdiction,  &c. 

Subjects  or  citizens  of  states  not  forming  part  of  the 
Union  who  are  domiciled  or  have  industrial  or  commercial 
establishments  on  the  territory  of  any  of  the  states  of  the 
Union  are  by  Article  3  of  the  Convention  to  be  on  the 

1  The  Convention  and  Protocol  will  be  found  reprinted  in  the  Appendix. 


320  ARRANGEMENTS 

same  footing  as  tin-  subjects  or  citizens  of  the  contracting 
•Utes. 

.  by  Article  I,  any  person  who  has  duly  registered 
nude]  an  application  for  a  patent  in  one  of  the  eon- 

•.MX'  states  sliull  enjoy,  as  regards  registration  in  the 
other  states,  and  rest -i-vin^  tin-  rights  of  these  parties,  a 
rix'ht  of  priority  for  six  months,  an  additional  month  1 
allowed  f.ir  countri* ••*  heyond  sea.     Subsequent  registry 

I  pat.  nt  ol'tain.  d  on  a  subsequent  application)  in  any 
of  the  other  states  of  tin-  I'nion  before  eipiry  of  that  period 
Chilli  not  be  invalidated  hy  any  acts  done  in  the  interval, 
either  hy  registration,  by  publication  of  tlie  invention,  or 
the  working  of  it  by  a  third  party. 

Article  5  declares  that  the  introduction  by  the  patentee 
into  the  country  where  the  patent  has  been  granted  of 
articles  manufactured  in  any  of  the  states  of  the  1'nion 
shall  not  entail  forfeiture  of  the  patent  as  it  did  in  several 

>  before  the  date  of  the  Convention.  But  this  clause 
is  followed  by  another  which  declares  that  the  patentee  shall 
remain  bound  to  work  his  patent  in  those  states  where  the 
law  of  the  country  obliges  him  to  do  so.  It  would  appear, 
then-fore,  that,  although  a  patentee  is  entitled  to  introduce 
into  a  country  articles  made  abroad,  he  must  still  work  the  in- 
vention in  that  country  if  there  is  a  regulation  to  that  effect. 
In  this  country  there  is  no  law  of  the  kind,  but  under  the 
li'Jnd  section  of  the  Act  of  1888  patentees  who  are  foreigners 
may  be  called  upon,  like  those  who  are  British  subjects,  to 
grant  licences  to  work  the  invention,  when  the  patents 
were  issued  under  that  Act. 

Temporary  protection  is  to  be  granted  under  Article  11 
to  patentable  inventions  appearing  at  official  or  officially 
recognised  international  exhibitions. 

In  order  to  carry  the  Convention  into  full  effect,  it  wa- 
directed  by  Article  13  that  an  International  Office  should 
be  organised  under  the  name  of  Bureau  Internati»n<il  <L 
I' I'nion  pour  la  pn>t«-ti<>n  dc  la  Propriete  Industridlr,  and 
that  this  office  should  be  placed  under  the  authority  of  the 
Central  Administration  of  the  Swiss  Confederation,  and 
worked  under  its  supervision. 


INTERNATIONAL  ARRANGEMENTS 

It  was  then  agreed  by  the  next  Article  that  the  Conven- 
tion should  be  submitted  to  periodical  revisions,  with  a 
view  to  improving  its  provisions,  for  which  end  conferences 
by  delegates  from  the  contracting  states  will  be  held.  It 
was  also  agreed  that  special  arrangements  for  the  protection 
of  industrial  property  might  be  made  separately  between 
any  of  the  contracting  states,  provided  that  such  arrange- 
ments do  not  contravene  the  provisions  of  the  Convention. 

By  Article  16  it  was  agreed  that  states  which  did  not 
originally  take  part  in  the  Convention  should  be  permitted 
to  join  the  Union  afterwards  by  diplomatically  notifying 
their  intention  to  do  so  to  the  Government  of  the  Swiss 
Confederation.  And  by  Article  18  it  is  provided  that 
any  state  might  retire  from  the  Union  by  giving  notice 
to  that  effect  to  the  Government  of  the  Swiss  Confedera- 
tion. At  the  expiration  of  one  year  from  the  date  of  the 
notice  the  state  giving  it  will  cease  to  be  a  member  of  the 
Union. 

Great  Britain  joined  this  Convention  on  March  17, 1884, 
and  an  Order  in  Council  under  section  103  of  the  Act  of 
1883  was  duly  made.  The  Board  of  Trade  has  issued  rules 
as  to  applications  for  patents  under  this  Convention,  and  a 
copy  of  them  will  be  found  in  the  Appendix. 

According  to  present  regulations, '  Patents  (International 
and  Colonial  Arrangements)  Rules  24-29, 1890,'  an  applica- 
tion in  the  United  Kingdom  for  a  patent  under  the  Inter- 
national Convention  must  be  made  within  seven  months  from 
the  date  of  the  first  foreign  application,  and  must  be  signed 
by  the  person  or  persons  by  whom  such  first  foreign  applica- 
tion was  made.  It  must  be  made  upon  form  A2  (stamped  II. , 
and  obtainable  upon  prepayment  of  the  value  of  the  stamp, 
through  any  money  order  office),  and,  in  addition  to  the 
specification,  provisional  or  complete,  must  be  accompanied 
by  (1)  a  copy  or  copies  of  the  specification  and  drawings 
as  filed  in  the  Patent  Office  of  the  Foreign  State  or  British 
Possession  in  respect  of  the  first  foreign  application,  duly 
certified  by  the  official  chief  of  such  Patent  Office,  or  other- 
wise verified  to  the  satisfaction  of  the  Comptroller ;  (2)  a 

Y 


INTERNATIONAL  ARRANGEMENTS 

statutory  declaration  as  to  tin-   identity  of  the  invention  in 
respect  of  which  the  application  is  made  with  tin-  inv.  • 
in  respect  of  \vhich  the  said  first  foreign  application  was 
inado,  and  if  the  specification  be  in  a  foreign  language,  a 
translation  thereof  must  be  annexed  to  and  verified  by 
statutory  declaration. 

By  the  terms  of  the  103rd  section  patents  under  the 
International  Convention  can  only  be  granted  to  the  person 
who  has  made  the  foreign  application.  i.s7//i/A-//''  !/»/»//- 

niHnn.  (\  R.  P.  C.  550  \  .!;•;,//,  •    I!.  P.  C.  : 

The  section  applies  although  the  state  in   which  the 
foreign  application  was  made  has  only  acceded  to  the  Con- 
vention after  the  date  of  the  foreign  application.       M 
l><it,f,t.  7  II.  1'.  C.  13.) 

A  '  renewed  application  '  for  a  patent  was  made  in  the 
I'nited  States,  and  seven  months  later  a  British  patent  was 
applied  for  under  this  section.  There  being  evidence  that 
the  original  American  application  was  no  longer  of  any 
force  and  effect,  and  conferred  no  rights,  the  British  patent 
was  directed  to  be  sealed  as  of  the  date  of  the  '  renewed 
application.'  (Van  //«•  /w/.-'x  l'<it,-Ht,  7  H.  P.  C.  69.) 

An   International   Office   (Le   Jinn-an    Int<  rnn(i»n(il)    in 
connection  with  the  Convention  has  been  establi 
Berne,  Switzerland,  which  publishes  a  monthly  periodical, 
entitled*  La  Propri.  t.    Indtistrielle.'     The  yearly  subscrip- 
tion (including  postage)  for  all  countries  within  the  !'• 
Union  is  5  francs  60  centimes,  and  this  sum  should  be 
forwarded  by  money  order  to  MM.  Jent  &  Reinert,  Impri- 
meurs,  Berne. 

Colonial  Arrangement*. — When  it  is  made  to  appear  to 
her  Majesty  that  the  Legislature  of  any  British  Possession 
has  made  satisfactory  provision  for  the  protection  of  inven- 
tions patented  in  this  country,  her  Majesty  is  empowered, 
by  the  104th  section  of  the  Patents  Act  of  1883,  by  Order 
in  Council,  to  apply  the  provisions  of  the  103rd  section, 
with  such  variations  or  additions  as  may  seem  fit,  to  such 
British  Possession;  but  such  order  is  made  revocable  by 
another  Order  in  Council.  This  order  has  at  present  only 
been  made  with  reference  to  New  Zealand. 


THE  PATENT   OFFICE  323 


CHAPTER  XXIII. 

THE    PATENT    OFFICE THE    COMPTROLLER — GENERAL    RULES — 

SEAL  OF  THE  OFFICE — OFFICIAL  DOCUMENTARY  EVIDENCE 
REGISTERS PUBLICATIONS  AND  INDEXES — LIBRARY—- 
PATENT MUSEUM. 

UNTIL  a  new  office  has  been  provided  by  the  Treasury, 
under  the  authority  of  the  eighty- second  section  of  the  Act 
of  1883,  the  business  relating  to  patents  is  transacted  at 
the  offices  of  the  defunct  Commissioners  of  Patents  in 
Southampton  Buildings,  Chancery  Lane.  All  the  officers 
and  clerks  of  the  office  are  appointed  by  the  Board  of  Trade, 
subject  to  the  approval  of  the  Treasury. 

The  Office  is  open  to  the  public  every  week-day  between 
the  hours  of  ten  and  four,  except  on  Christmas  Day,  Good 
Friday,  the  day  observed  as  her  Majesty's  birthday,  and 
the  days  observed  as  days  of  public  fast  or  thanksgiving,  or 
as  holidays  at  the  Bank  of  England. 

THE    COMPTROLLER-GENERAL. 

The  Comptroller-General  of  Patents,  Designs,  and  Trade- 
Marks  is  an  officer  appointed  by  the  Board  of  Trade  under 
the  eighty-third  section  of  the  statute  of  1883  to  act  under 
the  superintendence  and  direction  of  the  Board  as  chief  of 
the  Patent  Office,  which  is  placed  under  his  immediate 
charge. 

Besides  acting  as  general  manager  of  the  business  of  the 
office,  and  as  superintendent  of  the  examiners  and  clerks 
therein,  he  has  many  important  duties  to  perform,  as 
already  mentioned  in  the  preceding  chapters,  in  regard  to 
the  various  steps  to  be  taken  on  applications  for  patents, 
on  oppositions  to  grants,  on  the  issue  of  patents,  on  appli- 

T   2 


:tlM  THK  PATENT  OI  i 

MS  for  extensions  of  time,  iui«l  nn  appli  for  leave 

to  amend  specifications. 

In  addition  to  these,  which  may  1..  railed  his  routine 
duties,  though  some  of  them  will  frequently  call  for  the 

vise   of  much   car.     and   thought,  he  in   required,  by 
on  40,  to  issue  periodically  an  Illu-trat. -d  .Journal  of 
nted  Inventions,  as  well  as  Reports  of  Patent  Cases 
li-d  l.y  Courts  of  Law,  and  any  other  in  format  ion  that  he 
may  deem  generally  useful  or  important.     He  has  to  make 
provision  for  keeping  on  sale  copies  of  the  Journal,  and 
also  of  all  complete  specifications  for  the  time  being  in 
force,  with  their  accompanying  drawings.    And  he  is  din 
to  continue  in  such  form  as  he  may  deem  expedient  the 
indexes  and  abridgments  of   specification-    hitherto    pub- 
lished, and  to  prepare  and  publish  from  tim«  to  ;im« 
other  indexes,   abridgments  of  specifications,  catalog 
and  other  works  relating  to  inventions  as  he  may  see  fit. 

He  is  empowered  to  refuse  patents  when  the  use  of  tin- 
invention  would,  in  his  opinion,  be  contrary  to  law  or 
morality.  (Sect.  86.) 

He  is  enabled  to  correct  clerical  errors  in  or  in  coi 
tion  with  applications  for  patents,  or  in  the  name,  style,  or 
address  of  the  registered  proprietor  of  a  paten*  *1 . 

By  Rule  16  of  the  Patents  Rules  181)0  the  Comptroller 
is  empowered  to  amend  documents  and  to  correct  irregu- 
larities in  procedure  ;  by  Rule  51  he  is  authorised  to  en- 
large the  time  prescribed  by  the  Rules  for  doing  any  act  or 
taking  any  proceeding  thereunder,  and  by  Rule  80  large 
powers  are  given  to  him,  with  the  sanction  of  the  Board  of 
Trade,  to  dispense  with  acts,  documents,  evidence,  &c., 
required  under  the  Rules. 

By  section  8  of  the  Act  of  1885  he  has  power  to  extend 
the  time  for  leaving  complete  specifications  at  the  Patent 
Office,  and  for  accepting  complete  specifications,  and  for 
>taling  patents. 

Where  any  discretionary  power  is  by  the  Act  given  to 
the  Comptroller,  it  is  expressly  directed  by  the  ninety-fourth 
section  that  he  shall  not  exercise  that  power  adversely  to 


THE  PATENT  OFFICE  325 

the  applicant  for  a  patent,  or  for  amendment  of  a  specifica- 
tion, without  (if  so  required  within  the  prescribed  time  by 
the  applicant)  giving  the  applicant  an  opportunity  of  being 
heard  personally  or  by  his  agent.  As  to  the  procedure,  see 
Rules  11-14  of  the  Patents  Rules  1890. 

In  any  case  of  doubt  or  difficulty  arising  in  the  adminis- 
tration of  any  of  the  provisions  of  the  Act,  the  ninety-fifth 
section  directs  that  he  may  apply  to  either  of  the  law  officers 
for  directions  in  the  matter. 

The  Comptroller  is  required  by  the  102nd  section  to 
cause  a  report  respecting  the  execution  by  or  under  him  of 
the  Act  to  be  laid  before  both  Houses  of  Parliament,  before 
the  first  day  of  June  in  every  year,  and  to  include  therein 
for  the  year  to  which  each  report  relates  all  general  rules 
made  in  that  year  under  or  for  the  purposes  of  the  Act,  and 
an  account  of  all  fees,  salaries,  and  allowances,  and  other 
money  received  and  paid  under  the  Act. 

In  case  of  the  absence  of  the  Comptroller,  any  act  or 
thing  directed  to  be  done  by  or  to  him  may  be  done  by  or 
to  any  officer  authorised  in  that  behalf  by  the  Board  of 
Trade.  (Sect.  82,  subsect.  4.) 


GENERAL   RULES. 


The  Board  of  Trade  was  empowered  by  the  101st  section 
of  the  Act  of  1883  to  make  rules  for  regulating  generally 
the  business  of  the  Patent  Office  and  all  things  placed  under 
the  direction  and  control  of  the  Comptroller  or  of  the  Board ; 
and  particularly  for  regulating  the  practice  of  registration  ; 
for  making  or  requiring  duplicates  of  specifications,  amend- 
ments, drawings,  and  other  documents  ;  for  securing  and 
regulating  the  publishing  and  selling  of  copies  thereof ;  for 
securing  and  regulating  the  making,  printing,  publishing, 
and  selling  of  indexes  to  abridgments  of  specifications  and 
other  documents  in  the  Patent  Office,  and  providing  for  the 
inspection  of  indexes,  abridgments,  and  other  documents. 
Such  general  rules  are  to  be  of  the  same  effect  as  if  they 
were  contained  in  the  Act,  and  are  to  be  judicially  noticed. 
They  must  be  laid  before  the  two  Houses  of  Parliament, 


OFFICE 

either  of  \\hirh  has  power  within  :i  limit-  <i  linn    to  annul 
any  of  them. 

Consoliiiat«i    Iinl.-s  have  been  issued  by  the  Board 
i-.ult .  \\ith  tin-  .short  title  of  the  Patents  KuK-s  IHDO, 
and  are  reprinted  in  the  Appendix  to  this  volume. 

THE   SEAL   Or  THE    PATENT   OFFICE. 

By  the  eighty-fourth  section  of  th«  i  Vet  of  1888, 

ii  \^  directed  that  there  shall  he  a  seal  for  the  Patent  Office, 
and  that  impressions  thereof  shall  be  judicially  noticed  and 

admitted  in  evi«l«  : 

OFFICIAL   DOCUMENTARY   KVII>> 

By  the  eighty-ninth  section  of  the  same  Act  it  is  enacted 
that  printed  or  written  copies  or  extracts,  purporting  to  be 
certified  by  the  Comptroller  and  sealed  with  the  seal  of  the 
Patent  Office,  of  or  from  patents,  specifications,  disclaimers, 
and  other  documents  in  the  Patent  Office,  and  of  or  from 
registers  and  other  books  kept  there,  shall  be  admitted  in 
evidence  in  all  Courts  and  in  all  proceedings,  without 
further  proof  or  production  of  the  originals. 

Then  by  the  nim-ty-sixth  section  a  certificate  purporting 
to  be  under  the  hand  of  the  Comptroller  as  to  any  • 
matter,  or  thing  which  lie  is  authorised  by  the  Act,  or  any 
general  rules  made  thereunder,  to  make  or  do,  shall  be 
pn  inn-fade  evidence  of  the  entry  having  been  made,  and  of 
the  contents  thereof,  and  of  the  matter  or  thing  having 
been  done  or  left  undone. 

By  the  twenty-third  section  of  the  same  Act,  it  is  en- 
acted that  the  Register  of  Patents  to  be  kept  at  the  Patent 
Office  shall  be  prima-fadc  evidence  of  any  matters  directed 
or  authorised  to  be  inserted  therein. 

Finally,  by  the  hundredth  section  of  the  Act  it  is  directed 
that  copies  of  all  specifications,  drawings,  and  amendments 
left  at  the  Patent  Office  after  the  commencement  of  the  Art, 
printed  for  and  sealed  with  the  seal  of  the  Patent  Office, 
shall  be  transmitted  to  the  Edinburgh  Museum  of  Science 


THE  PATENT   OFFICE  327 

and  Art,  and  to  the  Enrolments  Office  of  the  Chancery 
Division  in  Ireland,  and  to  the  Eolls  Office  in  the  Isle  of 
Man,  within  twenty-one  days  after  the  same  shall  respec- 
tively have  been  accepted  or  allowed  at  the  Patent  Office ; 
and  certified  copies  of  or  extracts  from  any  such  documents 
shall  be  given  to  any  person  requiring  the  same  on  pay- 
ment of  the  prescribed  fee  ;  and  any  such  copy  or  extract 
shall  be  admitted  in  evidence  in  all  Courts  in  Scotland  and 
Ireland  and  in  the  Isle  of  Man,  without  further  proof  or 
production  of  the  originals. 

REGISTERS. 

The  Eegister  of  Patents  kept  at  the  office  and  mentioned 
in  the  chapter  on  Eegistration  is  open  to  public  inspection 
daily  (with  certain  exceptions  mentioned  in  Eule  78)  be- 
tween the  hours  of  ten  and  four.  Up  to  the  end  of  1883 
the  registers  kept  at  the  Patent  Office  were  two.  In  the 
one  called  the  Eegister  of  Patents  were  recorded,  in  chrono- 
logical order  and  with  the  dates,  all  patents  granted  under 
the  Patents  Act  of  1852,  as  well  as  the  deposit  or  filing 
of  specifications,  disclaimers,  memoranda  of  alterations, 
amendments,  confirmations,  and  extensions,  and  the  ex- 
piry, vacating,  and  cancelling  of  patents.  The  other 
register,  called  the  Eegister  of  Proprietors,  contains  entries 
of  the  assignments  of  patents,  or  of  any  share  or  interest 
therein  ;  and  of  licences,  mentioning  the  districts  to  which 
they  relate,  with  the  names  of  persons  having  shares  or 
interests  in  patents  and  licences,  and  the  dates  at  which 
such  shares  or  interests  were  acquired. 


PUBLICATIONS   AND   INDEXES. 


Besides  the  Illustrated  Official  Journal  relating  to  Patents 
and  Eeports  of  Patent  Cases  decided  in  the  Courts  of  Law 
and  directed  to  be  published  by  the  fortieth  section  of  the 
new  Act,  several  other  publications  are  issued  by  the  Patent 
Office.  A  *  Circular  of  Information,'  containing  sixteen 
pages,  is  forwarded  to  applicants.  Printed  copies  of  all  the 
specifications  filed  under  the  Patents  Act  of  1852,  and  of  all 


328  PATENT  OF! 

specifications  enrolled  pn  -vioubly  t<>  ilic  passing  <>f  th.  said 
Act  are  purchasable  for  small  sum-,  at  tin  ofllc.-,  \\ith 
lithographed  copi.s  of  the  drauin^  accompanying  such 
specifications.  Tin  spet •itications  under  tin-  new  Act  are 
also  printed  ami  published,  but  only  \\hen  thccompl- 
fications  have  been  filed  and  ;; 

Alphabetical  in  all  the  sp« cifications  of  i 

enrolled  in  Chancery,  from  ic.17  to  the  latest  available  . 
have  been  puhli>hed  under  the  authority  of  the  office,  as 
well  as  an  index  arranging  the  spe  ilieations  according  to 
the  subject-matter,  and  supplemental  indexes  continue  i 
published  annually.  Chronological  indexes  of  patents,  from 
the  earliest  date  to  the  y.-ar  IN?".,  have  also  been  published. 
Another  index,  called  the  llefen -nee  Index  of  Patents,  point* 
out  the  office  in  which  each  enrolled  or  filed  specification  of 
a  patent  maybe  consulted;  the  hooks  in  which  specifica- 
tions, law  proceedings,  and  other  subjects  connected  with 
inventions  have  been  noticed;  also,  such  specifications  as 
have  been  published  under  official  authority.  These  indexes 
are  of  great  service  in  tracing  the  history  of  inventions. 

The  volumes  containing  abridgments  of  specifications 
arranged  chronologically  in  classes  are  of  immense  utility 
to  inventors  who  wish  to  discover  what  has  been  already 
done  in  any  particular  branch  of  invention  ;  but,  unfor- 
tunately, these  abridgments  are  not  kept  up  to  date. 

Copies  of  the  Patent  Office  publications  are  presented 
to  the  principal  public  offices,  seats  of  learning,  societies, 
institutions,  libraries,  British  Colonies,  and  foreign  states. 

PUBLIC   LIBRARY. 

A  library  has  been  established  in  connection  with  tin- 
Patent  Office,  and  this  is  open  free  to  the  public.  The 
whole  of  the  publications  of  the  office,  and  also  the  lead- 
ing British  and  Foreign  scientific  journals  and  text-books 
in  the  various  departments  of  science  and  art  are  in  this 
library. 


THE  PATENT  OFFICE  329 

•k 

PATENT   MUSEUM. 

The  Patent  Museum  at  South  Kensington  is  transferre 
by  the  forty-first  section  of  the  Act  of  1883  to  the  Depart- 
ment of  Science  and  Art,  which  is  empowered  by  the  forty- 
second  section  to  require  any  patentee  to  furnish  them  with 
a  model  of  his  invention  on  payment  of  the  cost,  the  amount, 
in  case  of  dispute,  to  be  settled  by  the  Board  of  Trade. 


THE  INSTITUTE  OF  PATENT  AOI 


CHAPTKK    XXIV. 

THE    INSTITUTE    OF    PYTKNT    AdKNTS    AND    I:  1  ER. 

Is  the  year  1882  a  number  of  Patent  Agents  practi.sin^  in 
London,  being  of  opinion  that  it  was  highly  desirable  on 

nil  grounds  to  form  an  association  of  Patent  Agents,  and 
to  obtain  incorporation  for  it  under  the  statutes  in  force, 
the  proper  steps  were  taken,  after  the  memorandum  and 
articles  of  association  had  been  prepared,  to  effect  the  object 
in  view.  The  Institute,  as  the  association  was  named,  was 
established  to  form  a  representative  liody  of  the  Patent 
Agents  of  the  l"nit»  <1  Kingdom  for  the  purpose  of  promoting 
improvements  in  the  law  relating  to  patents  and  in  tin 
regulations  under  which  they  are  administered ;  also  to  frame 
rules  for  the  observance  of  Patent  Agents  in  all  matters 
appertaining  to  their  profession  and  practice.  The  Institute 
is  composed  of  Fellows,  Associates  (who  are  not  Patent 
Agents  by  profession),  Foreign  Members  (who  are  Patent 
Agents  in  the  colonies  or  in  foreign  countries),  and  Honorary 
Members.  The  affairs  of  the  Institute  are  managed  by  a 
Council,  consisting  of  a  President,  Vice-President,  and  Past 
Presidents,  together  with  eight  ordinary  members  selected 
from  amongst  the  Fellows.  The  offices  of  the  Institute  are 
at  19  Southampton  Buildings,  Chancery  Lane,  London. 
Here  they  keep  a  library,  and  at  stated  intervals  meetings 
are  held  at  which  papers  relating  to  patent  matters  are  read 
and  discussed.  A  volume  of  their  Transactions  is  published 
annually. 

Since  its  incorporation  the  Institute  has  been  of  material 
assistance  to  the  Board  of  Trade  in  shaping  some  of  the 
provisions  in  the  Acts  of  Parliament  bearing  upon  patents 


THE  INSTITUTE  OF  PATENT  AGENTS       331 

and  in  framing  rules  for  the  regulation  of  the  business  of 
the  Patent  Office. 

By  the  first  section  of  the  Patents  Act  of  1888,  it  was 
enacted  that  after  July  1st,  1889,  a  person  shall  not  be 
entitled  to  describe  himself  as  a  Patent  Agent  by  advertise- 
ment, by  description  on  his  place  of  business,  by  any  docu- 
ment issued  by  him,  or  otherwise,  unless  he  is  registered  as 
a  Patent  Agent  in  pursuance  of  that  Act ;  and  any  person 
knowingly  contravening  this  provision  is  liable  on  summary 
conviction  to  a  fine  not  exceeding  20/.  But  every  person 
who  proves  to  the  Board  of  Trade  that  he  had  been  bond 
fide  practising  in  the  United  Kingdom  as  a  Patent  Agent 
prior  to  the  passing  of  the  Act  is  entitled  to  be  registered. 
The  Board  of  Trade  is  authorised  to  make  general  rules  for 
giving  effect  to  this  enactment,  and  it  has  accordingly  issued 
a  set  of  Rules,  a  copy  of  which  will  be  found  in  the  Appendix 
to  this  work. 

A  register  is  to  be  kept  by  the  Institute  for  the  registra- 
tion of  Patent  Agents.  A  copy  of  the  register  is  to  be 
printed  annually  and  placed  on  sale.  The  Institute  is  to 
appoint  a  Registrar  to  keep  the  register  under  the  direction 
of  the  Board  of  Trade.  A  person  who  desires  to  be  regis- 
tered on  the  ground  that,  prior  to  the  passing  of  the  Act,  he 
had  been  bond  fide  practising  as  a  Patent  Agent,  must 
satisfy  the  Board  of  Trade  that  this  was  the  fact  before  his 
name  will  be  entered  on  the  register.  (Rule  5.)  With  the 
exception  of  persons  registered  on  this  ground,  no  person  is 
to  be  registered  unless  he  has  passed  and  produced  to  the 
Registrar  a  certificate  under  the  seal  of  the  Institute  that 
he  had  passed  such  final  examination  as  to  his  knowledge 
of  Patent  Law  and  Practice  and  of  the  duties  of  a  Patent 
Agent  as  the  Institute  shall  from  time  to  time  prescribe. 
Before  any  person  can  present  himself  for  the  final  qualify- 
ing examination  of  the  Institute  he  must  have  passed  one  of 
the  matriculation  examinations  of  an  English,  Scottish,  or 
Irish  University,  or  the  Oxford  or  Cambridge  Middle  Class 
Senior  Local  Examinations,  or  the  Examinations  of  the 
Civil  Service  Commissioners,  or  such  other  examinations  as 


332  Tili  OF  PATKKT  AGENTS 

ill.  Iii-t;tut.  shall,  with  the  :ij>pr<i\;il  of  t lie  Board  of  Trade, 
^illation  prescribe.  Thcs*-  j»n •liniinary  examinations 
in.  .  li  \\.  n  r.  not  iv<|uirnl  in  the  case  of  solicitors  in  England 
and  Ireland  and  law  agents  in  So-thind,  <>r  in  the  case  of 
persons  who  havr  for  seven  r«u:  years  been  con- 

tinuously engaged  as  pupils  «r  assistants  to  registered 
Patent  Agents.  In  these  cases  the  final  qualifying  examina- 
tion only  is  required  to  be  passed  by  candidates  for  regis- 
tration. 

The  Institute  must  hold,  at  least  once  in  the  year,  a  final 
qualifying  examination,  and  it  is  to  have  the  entire  manage- 
ment and  conduct  of  such  examination,  including  the 
appointment  of  the  examiners.  The  subjects  of  examina- 
tion are  («)  Patent  Law ;  (b)  Patent  practice  and  procedure  ; 
(c)  the  preparation  and  interpretation  of  patent  documents ; 
(</)  physical  science  and  its  applications  to  the  arts  and 
manufactures.  Persons  desiring  to  obtain  further  informa- 
tion as  to  the  examination  should  apply  to  the  Secretary  of 
the  Institute.  The  fees  payable  by  a  candidate,  and  those 
on  registration  and  annually  afterwards  by  Patent  Agents 
are  set  forth  in  Appendix  C.  to  the  Rules. 

The  names  of  persons  convicted  of  crimes,  or  found 
guilty  of  disgraceful  conduct,  are  to  be  removed  from  the 
register.  Non-payment  of  fees  is  another  cause  for  erasing 
the  name  of  a  Patent  Agent  from  the  register. 


APPENDIX 


PART   I 

STATUTES,  INTERNATIONAL   CONVENTION, 
EULES,  AND  FOEMS 


,  £ntrrnattmi<il  Cattlicnttan  xriQ  protocol 

PAGE 

21  JAMES  I.  c.  3  [1623]        .....        »     '  .        .335 

46  &  47  VICTORIA,  c.  57  [1883]  .......  337 

48  &  49  VICTORIA,  c.  63  [1885]  .......  367 

49  &  50  VICTORIA,  c.  37  [1886]  .......  369 

51  &  52  VICTORIA,  c.  50  [1888]  ........  370 

INTERNATIONAL  CONVENTION  AND  PROTOCOL         ....  373 

&ulf  £,  Jfarnrf,  aufc  $te£ 

PATENTS  RULES  OF  1890,  WITH  THE  FORMS  AND  LIST  OF  FEES  377 

EULES  OF  THE  LAW  OFFICERS      .......  406 

PRIVY  COUNCIL  RULES  .........  408 

REGISTER  OF  PATENT  AGENTS  RULES  .....         ,  411 


PART  II 

PATENT  LAWS  OF  FOREIGN  COUNTRIES         .        «        .        .        «    421 
PATENT  LAWS  OF  BRITISH  COLONIES  AND  POSSESSIONS       .        .    470 


APPENDIX 


PAET    I 


21  JAC.  I.  c.  3.     [A.D.  1623.] 

An  Act  concerning  Monopolies  and  Dispensations  with  Penal 
Laws,  and  the  Forfeitures  thereof. 

FORASMUCH  as  your  most  excellent  Majesty,  in  your  royal  Monopolies, 
judgment,  and  of  your  blessed  disposition  to  the  weal  and  quiet  'tnxytoth* 
of  your  subjects,  did  in  the  year  of  our  Lord  God  1610,  publish  £ta?*" 
in  print  to  the  whole  realm,  and  to  all  posterity,  that  all  grants 
and  monopolies,  and  of  the  benefit  of  any  penal  laws,  or  of 
power  to  dispense  with  the  law,  or  to  compound  for  the  forfeiture, 
are  contrary  to  your  Majesties  laws,  which  your  Majesties  decla- 
ration is  truly  consonant  and  agreeable  to  the  ancient  and  funda- 
mental laws  of  this  your  realm  :  And  whereas  your  Majesty  was 
further  graciously  pleased  expressly  to  command  that  no  suitor 
should  presume  to  move  your  Majesty  for  matters  of  that 
nature ;  yet  nevertheless,  upon  misinformations,  and  untrue 
pretences  of  public  good,  many  such  grants  have  been  unduly 
obtained,  and  unlawfully  put  in  execution,  to  the  great  grievance 
and  inconvenience  of  your  Majesties  subjects,  contrary  to  the 
laws  of  this  your  realm,  and  contrary  to  your  Majesties  most 
royal  and  blessed  intention  so  published,  as  aforesaid ;  for  avoiding 
thereof,  and  preventing  of  the  like  to  come,  may  it  please  your 
excellent  Majesty,  at  the  humble  suit  of  the  Lords  Spiritual  and 
Temporal,  and  the  Commonsinthis  present  Parliament  assembled, 
that  it  may  be  declared  and  enacted,  and  be  it  declared  and  enacted 
by  authority  of  this  present  Parliament,  that  all  monopolies,  and 
all  commissions,  grants,  licences,  charters,  and  letters  patent 
heretofore  made  or  granted,  or  hereafter  to  be  made  or  granted  to 
any  person  or  persons,  bodies  politic  or  corporate  whatsoever,  of 


336  8TAH  IK>:    ji  j 

the  sole  buying,  selling,  making,  working,  or  using  of 
tiling  within  this  realm,  or  the  dominion  of  Wales ;  or  of  any 
other  monopolies,  or  of  power,  liberty,  or  faculty  to  dispense  with 
any  others,  or  to  give  licence  or  toleration  to  do,  use,  or  exercise 
anything  against  the  tenour  or  purport  of  any  law  or  statute ;  or  to 
give  or  make  any  warrant  for  any  such  dispensation,  licence,  or 
toleration  to  be  had  or  made,  or  to  agree  or  compound  with  any 
others  for  any  penally,  or  forfeitures  limited  by  any  statute. 
any  grant  or  promise  of  the  benefit,  profit,  or  commodity,  of  any 
•me,  penalty,  or  sum  of  money,  that  is  or  shall  be  due  by 
any  statu  judgment  thereupon  had,  and  all  proclama- 

tions, inhibitions,  restraints,  warrants  of  assistance,  and  all 
other  matters  and  tilings  whatsoever,  any  way  lending  t< 
instituting,  erecting,  strengthening,  furthering,  or  countenancing 
of  the  same,  or  any  of  them,  are  altogether  contrary  to  the  laws 
of  this  realm,  and  so  are,  and  shall  be  utterly  void  and  of  none 
effect,  and  in  no  wise  to  be  put  in  use  or  execution. 

•J.  And  be  it  further  declared  and  enacted  by  the  authority 
aforesaid,  that  all  monopolies,  and  all  such  commissions,  grants, 
licences,  charters,  letters  patent-,  proclamations,  inhibitions, 
restraints,  warrants  of  assistance,  and  all  other  matters  and 
things  tending,  as  aforesaid,  and  the  force  and  validity  of  them, 
and  every  of  them,  ought  to  be,  and  shall  be  for  ever  hereafter 
examined,  heard,  tryed,  and  determined  by  and  according  to  the 
common  laws  of  this  realm,  and  not  otherwise. 

Aiiiwom  8.  And  be  it  further  enacted  by  the  authority  aforesaid,  that 

mo.  all  person  and  persons,  bodies  politic  and  corporate  whatsoever, 
which  now  are,  or  hereafter  shall  be,  shall  stand  and  be  disabled, 
and  uncapable  to  have,  use,  exercise,  or  put  in  use  any  monopoly, 
or  any  such  commission,  grant,  licence,  charter,  letters  patents, 
proclamation,  inhibition,  restraint,  warrant  of  assistance,  or  other 
matter  or  thing  tending,  as  aforesaid,  or  any  liberty,  power 
or  faculty,  grounded,  or  pretended  to  be  grounded,  upon  them 
or  any  of  them. 

[Sect.  4  enacts  that  the  party  grieved  by  pretext  of  a  mono- 
poly, etc.,  shall  recover  treble  damages  and  double  costs.  And 
sect.  5  refers  to  letters  patent  for  twenty-one  years  already 
granted.  The  all-important  section  is  the  next.] 

6.  Provided  also,  and  be  it  declared  and  enacted,  that  any 
declaration  before  mentioned  shall  not  extend  to  any  letters 
patents  and  grants  of  privilege  for  the  term  of  fourteen  years  or 
under,  hereafter  to  be  made,  of  the  sole  working  or  making  of 
any  manner  of  new  manufactures  within  this  realm,  to  the  true 


STATUTES:    46  AND   47  VICT.   C.   57  337 

and  first  inventor  or  inventors  of  such  manufactures,  which 
others  at  the  time  of  making  such  letters  patents  and  grants  shall 
not  use,  so  as  also  they  be  not  contrary  to  the  law,  nor  mis- 
chievous to  the  state,  by  raising  prices  of  commodities  at  home, 
or  hurt  of  trade,  or  generally  inconvenient :  the  said  fourteen 
years  to  be  accompted  from  the  date  of  the  first  letters  patents 
or  grant  of  such  privilege  hereafter  to  be  made,  but  that  the  same 
shall  be  of  such  force  as  they  should  be  if  this  Act  had  never  been 
made,  and  of  none  other. 

[The  remaining  sections  of  the  Act  have  become  obsolete  or 
have  been  repealed.] 


46  &^47  VICT.  c.  57. 

An  Act  to  amend  and  consolidate  the  Law  relating  to  Patents 
for  Inventions,  Registration  of  Designs,  and  of  Trade 
Marks.  [25th  Aiigust  1883.] 

[The  sections  relating  to  the  Registration  of  Designs  and  of 
Trade  Marks  are  not  here  reprinted.] 

BE  it  enacted,  &c.,  as  follows: — 

PART  I. — PRELIMINARY. 

1.  This  Act  may  be  cited  as  the  Patents,  Designs,  and  Trade  short  title. 
Marks  Act,  1883. 

2.  This  Act  is  divided  into  parts,  as  follows : —  Dmsion  of 

Act  into 

Part  I.— Preliminary.  parts- 

Part  II.— Patents. 
Part  III. — Designs. 
Part  IV.— Trade  Marks. 
Part  V.— General. 

3.  This  Act,  except  where  it  is  otherwise  expressed,  shall  comm«nce- 
commence  from  and  immediately  after  the  thirty-first  day  of  UR'"tofAet- 
December  1883. 

PART  II. — PATENTS. 
Application  for  and  Grant  of  Patent. 

4.  (1)  Any  person,  whether  a  British  subject  or  not,  may  Person.,  en- 
make  an  application  for  a  patent.  titu''' to 

apply  for 
patent. 


338  STATUTES:    4«  AND  47   VICT.  C.  57 

(2)  Two  or  more  persons  may  make  a  joint  application  for  a 
patent,  and  a  patent  may  be  granted  to  them  jointly.1 
1  6.  (1)  An  application  for  a  patent  most  be  made  in  the  form 

set  fortli  in  the  First  Schedule  to  this  Act.  or  in  such  other  form 
as  may  be  from  time  to  time  prescribed ;  *  and  most  be  left  at,  or 
sent  by  post,  to  the  Patent  Office  in  the  prescribed  manner. 

(2)  An  application  must  contain  a  declaration  *  to  the  effect 
that  the  applicant  is  in  possession  of  an  invention,  whereof  he, 
or,  in  the  case  of  a  joint  application,  one  or  more  of  the  appli- 
cants, claims  or  chum  to  be  the  true  and  first  inventor  or  in- 
\i-ntors.  and  for  which  he  or  they  desires  or  desire  to  obtain  a 
patent ;  and  must  be  accompanied  by  either  a  provisional  or 
complete  specification. 

(8)  A  provisional  specification  must  describe  the  nature  of 
the  invention,  and  be  accompanied  by  drawings  if  required.4 

(4)  A  complete  specification,  whether  left  on  application  or 
subsequently,  must  particularly  describe  and  ascertain  the  nature 
of  the  invention,  and  in  what  manner  it  is  to  be  performed,  and 
must  be  accompanied  by  drawings  if  required. 

(5)  A  specification,  whether  provisional  or  complete,  must 
commence  with  the  title,  and,  in  the  case  of  a  complete  specifica- 
tion, must  end  with  a  distinct  statement  of  the  invention  churned. 

.-m  •  6.  The  Comptroller  shall  refer  even*  application  to  an  ex- 
anuner,  who  shall  ascertain  and  report  to  the  Comptroller 
whether  the  nature  of  the  invention  has  been  fairly  described, 
and  the  application,  specification,  and  drawings,  if  any,  have 
been  prepared  in  the  prescribed  manner,  and  the  title  sufficiently 
indicates  the  subject-matter  of  the  invention. 

er  for  7.  [As  amended  by  the  Patents  Act  of  1888.]  (1)  If  the  ex- 

aminer  reports  that  the  nature  of  the  invention  is  not  fairly 
described,  or  that  the  application,  specification,  or  drawings  has 
K0^  or  have  notf  been  prepared  in  the  prescribed  manner,  or  that 
the  title  does  not  sufficiently  indicate  the  subject-matter  of  the 
invention,  the  Comptroller  may  refuse  to  accept  the  application, 
or  require  that  the  application,  specification,  or  drawings  be 
amended  before  he  proceeds  with  the  application ;  and  in  the 
latter  case  the  application  shall,  if  the  Comptroller  so  directs, 
bear  date  as  from  the  time  when  the  requirement  is  complied 
with. 

1  See  Patents  Act,  1883,  s.  5. 

*  See  Rales  5  and  C  of  Patents  Bales  1890. 

1  See  Patents  Act,  1885,  s.  2. 

4  As  to  drawings,  see  Rules  30-33  of  Patents  Roles  1890. 


STATUTES:    46  AND  47  VICT.   C.  57  339 

(2)  Where  the  Comptroller  refuses  to  accept  an  application 
or  requires  an  amendment,  the  applicant  may  appeal  from  his 
decision  to  the  law  officer. 

(3)  The  law  officer  shall,  if  required,  hear  the  applicant  and 
the  Comptroller,  and  may  make  an  order  determining  whether, 
and  subject  to  what  conditions  (if  any),  the  application  shall  be 
accepted. 

(4)  The  Comptroller  shall,  when   an  application  has  been 
accepted,  give  notice  thereof  to  the  applicant. 

(5)  If,  after  an  application  for  a  patent  has  been  made,  but 
before  the  patent  thereon  has  been  sealed,  another  application  for 
a  patent  is  made,  accompanied  by  a  specification  bearing  the 
same  or  a  similar  title,  the  Comptroller,  if  he  thinks  fit,  on  the 
request  of  the  second  applicant,  or  of  his  legal  representative, 
may,  within  two  months  of  the  grant  of  a  patent  on  the   first 
application,  either   decline  to  proceed  with   the   second  appli- 
cation or  allow  the   surrender  of  the  patent,  if  any,  granted 
thereon. 

8.  (1)  If  the  applicant  does  not  leave  a  complete  specification  Time  for 

.,,.  .  ,  i  leaving  com- 

with  his  application,  he  may  leave  it  at  any  subsequent  time  pietespecm- 
within  nine  months  from  the  date  of  application.1 

(2)  Unless  a  complete  specification  is  left  within  that  time 
the  application  shall  be  deemed  to  be  abandoned. 

9.  (1)  Where  a  complete  specification  is  left  after  a  pro-  comparison 
visional  specification,  the  Comptroller  shall  refer  both  specifica-   visional  and 
tions  to  an  examiner  for  the  purpose  of  ascertaining  whether 

the  complete  specification  has  been  prepared  in  the  prescribed 
manner,  and  whether  the  invention  particularly  described  in  the 
complete  specification  is  substantially  the  same  as  that  which  is 
described  in  the  provisional  specification. 

(2)  If  the  examiner  reports  that  the  conditions  hereinbefore 
contained  have  not  been   complied  with,  the  Comptroller  may 
refuse  to  accept  the  complete  specification  unless  and  until  the 
same  shall  have  been  amended  to  his  satisfaction ;  but  any  such 
refusal  shall  be  subject  to  appeal  to  the  law  officer. 

(3)  The  law  officer  shall,  if  required,  hear  the  applicant  and 
the  Comptroller,  and  may  make  an  order  determining  whether, 
and  subject  to  what  conditions,  if  any,  the  complete  specification 
shall  be  accepted. 

(4)  Unless  a  complete  specification  is  accepted  within  twelve 

1  The  Comptroller  is  empowered  to  gran  further  time,  not  exceeding  one 
month.    (See  s.  3  of  Patents  Act,  1885.) 

z  2 


340  STATUTES:    46  AM)   47   Vld 

months  '  from  the  date  of  application,  then  (save  in  the  cue  of  an 
appeal  having  been  lodged  against  the  refusal  to  accept)  the 
application  shall,  at  the  expiration  of  those  twelve  months, 
become  void. 

(5)  [As  amended  by  the  3rd  sect,  of  the  Act  of  1888.]  Reports 
of  examiners  shall  not  in  any  case  be  published  or  open  to  public 
inspection,  and  shall  not  be  liable  to  production  or  inspection  in 
any  legal  proceeding,  unless  the  Court  or  officer  having  power  to 
order  discovery  in  such  legal  proceeding  shall  certify  that  such 
production  or  inspection  is  desirable  in  the  interests  of  jt 
and  ought  to  be  allowed. 

AdmtiM.  10.  On  the  acceptance  of   the  complete  specification    the 

Comptroller  shall  advertise  the  acceptance  ;  and  the  application 
and  specification  or  specifications,  with  the  drawings,  if  any,  shall 
be  open  to  public  inspection. 

11.  [As  amended  by  the  4th  sect,  of  the  Act  of  1888. 
Any  person  may  at  any  time  within  two  months  from  the  date 
of  the  advertisement  of  the  acceptance  of  a  complete  specification 
give  notice  at  the  Patent  Office  of  opposition  to  the  grant  of  the 
patent,  on  the  ground  of  the  applicant  having  obtained  the  inven- 
tion from  him,  or  from  a  person  of  whom  he  is  the  legal  repre- 
sentative, or  on  the  ground  that  the  invention  has  been  patented 
n  this  country  on  an  application  of  prior  date,  or  on  the  ground 
that  the  complete  specification  describes  or  claims  an  invention 
other  than  that  described  in  the  provisional  specification,  and 
that  such  other  invention  forms  the  subject  of  an  application 
made  by  the  opponent  in  the  interval  between  the  leaving  of  the 
provisional  specification  and  the  leaving  of  the  complete  specifi- 
cation, but  on  no  other  ground. 

(2)  Where  such  notice  is  given  the  Comptroller  shall  give 
notice  of  the  opposition  to  the  applicant,  and  shall,  on  the  expira- 
tion of  those  two  months,  after  hearing  the  applicant  and  tin- 
person  so  giving  notice,  if  desirous  of  being  heard,  decide  on  tin- 
case,  but  subject  to  appeal  to  the  law  officer. 

(8)  The  law  officer  shall,  if  required,  hear  the  applicant  and 
any  person  so  giving  notice,  and  being,  in  the  opinion  of  the  law 
officer,  entitled  to  be  heard  in  opposition  to  the  grant,  and  shall 
determine  whether  the  grant  ought  or  ought  not  to  be  made. 

(4)  The  law  officer  may,  if  he  thinks  fit,  obtain  the  assistance- 
of  an  expert,  who  shall  be  paid  such  remuneration  as  the  law 
officer,  with  the  consent  of  the  Treasury,  shall  appoint. 

1  The  Comptroller  is  empowered  to  grant  further  time,  not  exceeding 
three  months.    (See  sect  3  of  Act,  1885.) 


STATUTES:    46  AND   47  VICT.    C.  57  341 

12.  (1)  If  there  is  no  opposition,  or,  in  case  of  opposition,  if  se.uingof 
the  determination  is  in  favour  of  the   grant  of  a   patent,   the  pat< 
Comptroller  shall  cause  a  patent  to  be  sealed  with  the  seal  of  the 
Patent  Office. 

(2)  A  patent  so  sealed  shall  have  the  same  effect  as  if  it  were 
sealed  with  the  Great  Seal  of  the  United  Kingdom. 

(8)  A  patent  shall  be  sealed  as  soon  as  may  be,  and  not  after 
the  expiration  of  fifteen  months  l  from  the  date  of  application, 
except  in  the  cases  hereinafter  mentioned,  that  is  to  say — 

(a)  Where  the  sealing  is  delayed  by  an  appeal  to  the  law 
officer,  or  by  opposition  to  the  grant  of  the  patent,  the 
patent  may  be  sealed  at  such  time  as  the  law  officer 
may  direct. 

{b)  If  the  person  making  the  application  dies  before  the 
expiration  of  the  fifteen  months  aforesaid,  the  patent 
may  be  granted  to  his  legal  representative  and  sealed 
at  any  time  within  twelve  months  after  the  death  of 
the  applicant. 

13.  Every  patent  shall  be  dated  and  sealed  as  of  the  day  of  Date  of 
the  application  :   Provided  that  no   proceedings  shall  be  taken  paten " 
in  respect  of  an  infringement  committed  before  the  publication  of 

the  complete  specification  :  Provided  also,  that  in  case  of  more 
than  one  application  for  a  patent  for  the  same  invention,  the 
sealing  of  a  patent  on  one  of  those  applications  shall  not  prevent 
the  sealing  of  a  patent  on  an  earlier  application. 

Provisional  Protection. 

14.  Where  an  application  for  a  patent  in  respect  of  an  inven-   Provisional 
tion  has  been  accepted,  the   invention  may  during  the  period   pro1 
between  the  date  of  the  application  and  the  date  of  sealing  such 

patent  be  used  and  published  without  prejudice  to  the  patent  to 
be  granted  for  the  same  ;  and  such  protection  from  the  conse- 
quences of  use  and  publication  is  in  this  Act  referred  to  as  pro- 
visional protection. 

Protection  by  Complete  Specification. 

15.  After  the  acceptance  of  a  complete  specification  and  until  Effect  of  ac- 
the  date  of  sealing  a  patent  in  respect  thereof,  or  the  expiration  complete  ° 
of  the  time  for  sealing,  the  applicant  shall  have  the  like  privi-  8i)ecificatlOB 
leges  and  rights  as  if  a  patent  for  the  invention  had  been  sealed 

1  A  further  extension  of  four  months  after  the  fifteen  months  is  allowed 
for  the  sealing  of  the  patent  by  sect.  3  of  the  Act  of  1885. 


342  STATUTES:    40  AND   47   VI «T.  C.  67 

on  the  date  of  the  acceptance  of  the  complete  specification  :  Pro* 
Tided  that  an  applicant  shall  not  be  entitled  to  institute  any 
proceeding  for  infringement  unless  and  nntil  a  patent  for  the 
invention  has  been  granted  to  him. 

Patent. 

16.  Every  patent  when  sealed  shall  have  effect  throughout 
the  extent  of  the  United  Kingdom  and  the-  Isle  of  Man. 
T •; •••;?  17.  (1)  The  term  limited  in  every  patent  for  the  duration 

thereof  shall  be  fourteen  years  from  its  date. 

(2)  But  every  patent  shall,  notwithstanding  anything  therein 
or  in  this  Act,  cease  if  the  patentee  fails  to  make  the  prescribed 
payments  within  the  prescribed  times. 

(8)  If,  nevertheless,  in  any  case,  by  accident,  mistake,  or  in- 
advertence, a  patentee  fails  to  make  any  prescribed  payment 
within  the  prescribed  time,  he  may  apply  to  the  Comptroller  for 
an  enlargement  of  the  time  for  making  that  payment. 

(4)  Thereupon  the  Comptroller  shall,  if  satisfied  that  the 
failure  has  arisen  from  any  of  the  above-mentioned  causes,  on 
receipt  of  the  prescribed  fee  for  enlargement,  not  exceeding  ten 
pounds,  enlarge  the  time  accordingly,  subject  to  the  following 
conditions : — 

(a)  The  time  for  making  any  payment  shall  not  in  any  case 

be  enlarged  for  more  than  three  months. 

(b)  If  any  proceeding  shall  be  taken  in  respect  of  an  infringe- 

ment of  the  patent  committed  after  a  failure  to  make 
any  payment  within  the  prescribed  time,  and  before 
the  enlargement  thereof,  the  Court  before  which  the 
proceeding  is  proposed  to  be  taken  may,  if  it  shall 
think  fit,  refuse  to  award  or  give  any  damages  in 
respect  of  such  infringement. 

Amendment  of  Specification. 

Amendment         lg.  (1)  An  applicant  or  a  patentee  may,  from  time" to  time, 

t.  r  by  request  in  writing  left  at  the  Patent  Office,  seek  leave  to 

amend  his  specification,  including  drawings  forming  part  thereof, 

by  way  of  disclaimer,  correction,  or  explanation,  stating  the 

nature  of  such  amendment  and  his  reasons  for  the  same. 

(2)  The  request  and  the  nature  of  such  proposed  amend- 
ment shall  be  advertised  in  the  prescribed  manner,  and  at  any 
time  within  one  month  from  its  first  advertisement  any  person 
may  give  notice  at  the  Patent  Office  of  opposition  to  the  amend- 
ment. 


STATUTES:    46  AND  47  VICT.  C.  67  343 

(3)  Where  such  notice  is  given  the  Comptroller  shall  give 
notice  of  the   opposition  to  the  person  making  the  request, 
and  shall  hear  and  decide  the  case  subject  to  an  appeal  to  the 
law  officer. 

(4)  The    law  officer  shall,  if  required,    hear  the  person 
making  the   request   and   the    person   so   giving   notice,   and 
being  in  the  opinion  of  the  law  officer  entitled  to  be  heard  in 
opposition   to   the  request,  and  shall  determine  whether,  and 
subject  to  what  conditions,  if  any,  the  amendment  ought  to  be 
allowed. 

(5)  Where  no  notice  of  opposition  is  given,  or  the  person  so 
giving  notice  does  not  appear,  the  Comptroller  shall  determine 
whether,  and  subject  to  what  conditions,  if  any,  the  amendment 
ought  to  be  allowed. 

(6)  When  leave  to  amend  is  refused  by  the  Comptroller,  the 
person  making  the  request  may  appeal  from  his  decision  tc  the 
law  officer. 

(7)  The  law  officer  shall,  if  required,  hear  the  person  making 
the  request  and  the  Comptroller,  and  may  make  an  order  deter- 
mining whether,  and   subject  to  what  conditions,  if  any,  the 
amendment  ought  to  be  allowed. 

(8)  No  amendment  shall  be  allowed  that  would  make  the 
specification,  as  amended,  claim  an  invention  substantially  larger 
than,  or  substantially  different  from,  the  invention  claimed  by  the 
specification  as  it  stood  before  amendment. 

(9)  Leave  to  amend  shall  be  conclusive  as  to  the  right  of  the 
party  to  make  the  amendment  allowed,  except  in  case  of  fraud ; 
and  the  amendment  shall  in  all  Courts,  and  for  all  purposes,  be 
deemed  to  form  part  of  the  specification. 

(10)  [As  amended  by  sect.  5  of  the  Act  of  1888.]    The  fore- 
going provisions  of  this  section  do  not  apply  when,  and  so  long 
as,  any  action  for  infringement  or  proceeding  for  revocation  of  a 
patent  is  pending. 

19.  In  an  action  for  infringement  of  a  patent,  and  in  a  pro-  Power  to  <iis- 
ceeding  for  revocation  of  a  patent,  the  Court  or  a  judge  may  at  fn mention1  °f 
any  time  order  that  the  patentee  shall,  subject  to  such  terms  as  actToif  etc. 
to  costs  and  otherwise  as  the  Court  or  a  judge  may  impose,  be  at 

liberty  to  apply  at  the  Patent  Office  for  leave  to  amend  his  speci- 
fication by  way  of  disclaimer,  and  may  direct  that  in  the  mean- 
time the  trial  or  hearing  of  the  action  shall  be  postponed. 

20.  Where  an  amendment  by  way  of  disclaimer,  correction,  Restriction 
or  explanation,  has  been  allowed  under  this  Act,  no  damages  o^daSage^ 
shall  be  given  in  any  action  in  respect  of  the  use  of  the  invention 


:m 


STATUTES:    4«  AND   47   V1CT.  C.  »7 


A  .•      •    ... 


;•   •  •  f  r 

11..,:      M 

otto  grant 


!.-.-  ••        f 
[a-.  :.-. 


Tec*  In 

Khedule. 


before  the  disclaimer,  correction,  or  explanation,  unless  the 
patentee  establishes  to  the  satisfaction  of  the  Court  that  his 
original  claim  was  framed  in  good  faith  and  with  reasonable  skill 
a u.l  knowledge. 

-1.  1.  very  amendment  of  a  specification  shall  be  advertised 
in  the  prescribed  manner. 

Compulsory  Licence*. 

'2'2.  If  on  the  petition  of  any  person  interested  it  is  proved  to 
the  Board  of  Trade  that  by  reason  of  the  default  of  a  patentee  to 
grant  licences  on  reasonable  terms — 

(a)  The  patent  is  not  being  worked  in  t  mgdom  ; 

or 
(6)  The  reasonable  requirements  of  the  public  with  respect  to 

the  invention  cannot  be  supplied  ;  or 

(c)  Any  person  is  prevented  from  working  or  using  to  the 
best  advantage  an  invention  of  which  he  is  possessed, 
the  Board  may  order  the  patentee  to  grant  licences  on  such 
terms  as  to  the  amount  of  royalties,  security  for  payment,  or 
otherwise,  as  the  Board,  having  regard  to  the  nature  of  the  in- 
vention and  the  circumstances  of  the  case,  may  deem  just,  and 
any  such  order  may  be  enforced  by  mandamus. 

Register  of  Patents. 

28.  (1)  There  shall  be  kept  at  the  Patent  Office  a  book  called 
the  Register  of  Patents,  wherein  shall  be  entered  the  names  and 
addresses  of  grantees  of  patents,  notifications  of  assignments  and 
of  transmissions  of  patents,  of  licences  under  patents,  and  of 
amendments,  extensions,  and  revocations  of  patents,  and  such 
other  matters  affecting  the  validity  or  proprietorship  of  patents 
as  may  from  time  to  time  be  prescribed. 

(2)  The  register  of  patents  shall  be  primd-facie  evidence  of 
any  matters  by  this  Act  directed  or  authorised  to  be  inserted 
therein. 

(8)  Copies  of  deeds,  licences,  and  any  other  documents  affect- 
ing the  proprietorship  in  any  letters  patent  or  in  any  licence 
thereunder  must  be  supplied  to  the  Comptroller  in  the  prescribed 
manner  for  filing  in  the  Patent  Office. 

Fees. 

24.  (1)  There  shall  be  paid  in  respect  of  the  several  in- 
struments described  in  the  Second  Schedule  to  this  Act  the 


STATUTES:    46   AND   47   VICT.   C.   57 


345 


fees  in  that  schedule  mentioned,  and  there  shall  likewise  be 
paid,  in  respect  of  other  matters  under  this  part  of  the  Act, 
such  fees  as  may  he  from  time  to  time,  with  the  sanction  of 
the  Treasury,  prescribed  by  the  Board  of  Trade ;  and  such 
fees  shall  be  levied  and  paid  to  the  account  of  her  Majesty's 
Exchequer  in  such  manner  as  the  Treasury  may  from  time  to 
time  direct. 

(2)  The  Board  of  Trade  may  from  time  to  time,  if  they 
think  fit,  with  the  consent  of  the  Treasury,  reduce  any  of  those 
fees. 

Extension  of  Term  of  Patent. 

25.  (1)  A  patentee  may,  after  advertising  in  manner  directed   Extension  of 
by  any  rules  made  under  this  section  his  intention  to  do  so,  present   p|™nt  on 
a  petition  to  her  Majesty  in  Council,  praying  that  his  patent  may   g^een  £1*° 
be  extended  for  a  further  term  ;  but  such  petition  must  be  pre-   Council« 
sented  at  least  six  months  before  the  time  limited  for  the  expira- 
tion of  the  patent. 

(2)  Any  person    may   enter    a    caveat,    addressed    to    the 
Eegistrar  of    the  Council,   at   the  Council  Office,  against  the 
extension. 

(3)  If  her  Majesty  shall  be  pleased  to  refer  any  such  petition 
to  the  Judicial  Committee  of  the  Privy  Council,  the  said  Com- 
mittee shall  proceed  to  consider  the  same,  and  the  petitioner  and 
any  person  who  has  entered  a  caveat  shall  be  entitled  to  be  heard 
by  himself  or  by  counsel  on  the  petition. 

(4)  The  Judicial  Committee  shall,  in  considering  their  de- 
cision, have  regard  to  the  nature  and  merits  of  the  invention  in 
relation  to  the  public,  to  the  profits  made  by  the  patentee  as  such, 
and  to  all  the  circumstances  of  the  case. 

(5)  If  the  Judicial  Committee  report  that  the  patentee  has 
been  inadequately  remunerated  by  his  patent,  it  shall  be  lawful 
for  her  Majesty  in  Council  to  extend  the  term  of  the  patent  for  a 
further  term  not  exceeding  seven,  or  in  exceptional  cases  fourteen, 
years  ;  or  to  order  the  grant  of  a  new  patent  for  the  term  therein 
mentioned,  and  containing  any  restrictions,  conditions,  and  pro- 
visions that  the  Judicial  Committee  may  think  fit. 

(6)  It  shall  be  lawful  for  her  Majesty  in  Council  to  make, 
from  time  to  time,  rules  of  procedure  and  practice  for  regu- 
lating proceedings  on  such  petitions,  and  subject  thereto  such 
proceedings  shall  be  regulated  according  to  the  existing  pro- 
cedure and  practice   in  patent  matters  of  the  Judicial  Com- 
mittee. 


34(5  STATUTES:    40  AND  47   VICT.  C.  67 

(7)  The  costs  of  all  parties  of  and  incident   to  racb  pro- 
ceedings shall  be  in  the  discretion  of  the  Judicial  Committee ; 
and  the  orders  of  the  Committee  respecting  costs  shall  be  en- 
forceable as  if  they  were  orders  of  a  division  of  the  High  Court 
of  Justice. 

Revocation. 

20.  (1)  The  proceeding  by  sc ire  facia*  to  repeal  a  patent  is 
hereby  abolished. 

(2)  Revocation  of  a  patent  may  be  obtained  on  petition  to  the 
Court. 

(8)  Every  ground  on  which  a  patent  might  at  the  commence- 
ment of  this  Art  be  repealed  by  tcire  facias  shall  be  available 
by  way  of  defence  to  an  action  of  infringement,  and  shall  also  be 
a  ground  of  revocation. 

(4)  A  petition  for  revocation  of  a  patent  may  be  presented 
by- 

(a)  The  Attorney-General  in  England  or  Ireland,  or  the  Lord 
Advocate  in  Scotland ; 

(6)  Any  person  authorised  by  the  Attorney-General  in  England 
or  Ireland, or  the  Lord  Advocate  in  Scotland; 

(c)  Any  person  alleging  that  the  patent  was  obtained  in  fraud 
of  his  rights,  or  of  the  rights  of  any  person  nn<! 
through  whom  he  claims  ; 

Any  person  alleging  that  he,  or  any  person  under  or 
through  whom  he  claims,  was  the  true  inventor  of  any 
invention  included  in  the  claim  of  the  patentee  ; 

(e)  Any  person  alleging  that  he,  or  any  person  under  or 
through  whom  he  claims  an  interest  in  any  trade,  busi- 
ness, or  manufacture,  had  publicly  manufactured,  used, 
or  sold,  within  this  realm,  before  the  date  of  the  patent, 
anything  claimed  by  the  patentee  as  his  invention. 

(5)  The  plaintiff  must  deliver  with  his  petition  particulars  of 
the  objections  on  which  he  means  to  rely,  and  no  evidence  shall, 
except  by  leave  of  the  Court  or  a  judge,  be  admitted  in  proof  of 
any  objection  of  which  particulars  are  not  so  delivered. 

(6)  Particulars  delivered  may  be  from  time  to  time  amended  by 
leave  of  the  Court  or  a  judge. 

(7)  The  defendant  shall  be  entitled  to  begin,  and  give  evi- 
dence in  support  of  the  patent,  and  if  the  plaintiff  gives  evidence 
impeaching  the  validity  of  the  patent  the  defendant  shall  be 
entitled  to  reply. 

(8)  Where  a  patent  has  been  revoked  on  the  ground  of  fraud, 


STATUTES:    46  AND  47  VICT.   C.  67  347 

the  Comptroller  may,  on  Fthe  application  of  the  true  inventor, 
made  in  accordance  with  the  provisions  of  this  Act,  grant  to  him 
a  patent  in  lieu  of  and  hearing  the  same  date  as  the  date  of  re- 
vocation of  the  patent  so  revoked ;  but  the  patent  so  granted  shall 
cease  on  the  expiration  of  the  term  for  which  the  revoked  patent 
was  granted. 

Crown. 

27.  (1)  A  patent  shall  have  to  all  intents  the  like  effect  as  Patent  to 
against  her  Majesty  the  Queen,  her  heirs  and  successors,  as  it  has 
against  a  subject. 

(2)  But  the  officers  or  authorities  administering  any  depart- 
ment of  the  service  of  the  Crown  may,  by  themselves,  their  agents, 
contractors,  or  others,  at  any  time  after  the  application,  use  the  in- 
vention for  the  services  of  the  Crown  on  terms  to  be  before  or  after 
the  use  thereof  agreed  on,  with  the  approval  of  the  Treasury,  be- 
tween those  officers  or  authorities  and  the  patentee,  or,  in  default  of 
such  agreement,  on  such  terms  as  may  be  settled  by  the  Treasury 
after  hearing  all  parties  interested. 

Legal  Proceedings. 

28.  (1)  In  an  action  or  proceeding  for  infringement  or  revoca-  Hearing 
tion  of  a  patent,  the  Court  may,  if  it  thinks  fit,  and  shall,  on  the  assessor, 
request  of  either  of  the  parties  to  the  proceeding,  call  in  the  aid  of 

an  assessor  specially  qualified,  and  try  and  hear  the  case  wholly  or 
partially  with  his  assistance  ;  the  action  shall  be  tried  without  a 
jury  unless  the  Court  shall  otherwise  direct. 

(2)  The  Court  of  Appeal  or  the  Judicial  Committee  of  the 
Privy  Council  may,  if  they  see  fit,  in  any  proceeding  before  them 
respectively,  call  in  the  aid  of  an  assessor  as  aforesaid. 

(3)  The  remuneration,  if  any,  to  be  paid  to  an  assessor  under 
this  section  shall  be  determined  by  the  Court  or  the  Court  of 
Appeal  or  Judicial  Committee,  as  the  case  may  be,  and  be  paid 
in  the  same  manner  as  the  other  expenses  of  the  execution  of 
this  Act. 

29.  (1)  In  an  action  for  infringement  of  a  patent  the  plaintiff  Delivery  of 
must  deliver  with  his  statement  of  claim,  or  by  order  of  the  Court  partlcular3- 
or  the  judge,  at  any  subsequent  time,  particulars  of  the  breaches 
complained  of. 

(2)  The  defendant  must  deliver  with  his  statement  of  defence, 
or,  by  order  of  the  Court  or  a  judge,  at  any  subsequent  time, 
particulars  of  any  objections  on  which  he  relies  in  support 
thereof. 


341 


s;    46  ANI>  4;   VICT.  C.  57 


Order  (or  In- 
spection, 

etc.,  Ui 

k  i  .. 


Certificate 

O.'  v.»  :  .  '  . 


t!.r,-at-  ••'. 
I-.-..:  ;••.. 
oeedioc*. 


If  the  defendant  disputes  the  validity  of  the  patent,  the 
vm  .1  by  him  must  state  on  what  grounds  he  dig- 
it, ami,  if  one  of  those  grounds  is  want  of  novelty,  must 
state  the  time  and  place  of  the  previous  publication  or  user 
alleged  by  him. 

At  the  hearing  no  evidence  shall,  except  by  leave  of  the 
:  or  a  judge,  be  admitted  in  proof  of  any  alleged  infringement 
or  objection  of  which  particulars  are  not  so  delivered. 

(5)  Particulars  delivered  may  be  from  time  to  time  amended 
ve  of  the  Court  or  a  judge. 

On  taxation  of  costs  regard  shall  be  had  to  the  particulars 
di-livmnl  by  the  plaintiff  and  by  the  defendant ;  and  they,  respect- 
ively, shall  not  be  allowed  any  costs  in  respect  of  any  particular 
delivered  by  them  unless  the  same  is  certified  by  the  Court  or  a 
judge  to  have  been  proven  or  to  have  been  reasonable  and 
proper,  without  regard  to  the  general  costs  of  the  case. 

30.  In  an  action  for  infringement  of  a  patent,  the  Court  or  a 
judge  may,  on  the  application  of  either  party,  make  such  order 
for  an  injunction  inspection  or  account,  and  impose  such  terms, 
and  give  such  directions  respecting  the  same  and  the  proceedings 
thereon  as  the  Court  or  a  judge  may  see  fit. 

31.  In  an  action  for  infringement  of  a  patent,  the  Court  or  a 
judge  may  certify  that  the  validity  of  the  patent  came  in  question  ; 
and  if  the  Court  or  a  judge  so  certifies,  then,  in  any  subsequent 
action  for  infringement,  the  plaintiff  in  that  action,  on  obtaining 
a  final  order  or  judgment  in  his  favour,  shall  have  his  full  costs, 
charges,  and  expenses  as  between  solicitor  and  client,  unless  the 
Court  or  judge  trying  the  action  certifies  that  he  ought  not  to 
have  the  same. 

Where  any  person  claiming  to  be  the  patentee  of  an 
invention,  by  circulars,  advertisements,  or  otherwise,  threatens 
any  other  person  with  any  legal  proceedings  or  liability  in  respect 
of  any  alleged  manufacture,  use,  sale,  or  purchase  of  the  inven- 
tion, any  person  or  persons  aggrieved  thereby  may  bring  an  action 
against  him,  and  may  obtain  an  injunction  against  the  continu- 
ance of  such  threats,  and  may  recover  such  damage,  if  any,  as 
may  have  been  sustained  thereby,  if  the  alleged  manufacture,  use, 
sale,  or  purchase  to  which  the  threats  related  was  not  hi  fact 
an  infringement  of  any  legal  rights  of  the  person  making  such 
threats  :  Provided  that  this  section  shall  not  apply  if  the  person 
making  such  threats  with  due  diligence  commences  and  pro- 
secutes an  action  for  infringement  of  his  patent. 


STATUTES:    46  AKD   4?  VICT.    C.   57  3-1-9 


Miscellaneous. 

33.  Every  patent  may  be  in  the  form  in  the  First  Schedule  Patent  for 
to  this  Act,  and  shall  be  granted  for  one  invention  only,  but  may  tioVoniy!" 
contain  more  than  one  claim  ;  but  it  shall  not  be  competent  for 

any  person  in  an  action  or  other  proceeding  to  take  any  objection 
to  a  patent  on  the  ground  that  it  comprises  more  than  one 
invention. 

34.  (1)  If  a  person  possessed  of  an  invention  dies  without  Patent  on 
making  application  for  a  patent  for  the  invention,  application  ofrepresen- 
may  be  made  by,  and  a  patent  for  the  invention  granted  to,  his  MMedin- 
legal  representative. 

(2)  Every  such  application  must  be  made  within  six  months 
of  the  decease  of  such  person,  and  must  contain  a  declaration  by 
the  legal  representative  that  he  believes  such  person  to  be  the  true 
and  first  inventor  of  the  invention. 

35.  A  patent  granted  to  the  true  and  first  inventor  shall  not  Patent  to 
be  invalidated  by  an  application   in  fraud  of  him,  or  by  pro-  Tenter  not 
visional  protection  obtained  thereon,  or  by  any  use  or  publication  HyappHo*. 
of    the   invention   subsequent    to    that   fraudulent    application  onlim  fraud 
during  the  period  of  provisional  protection. 

36.  A  patentee  may  assign  his  patent  for  any  place  in  or  part  Assignment 
of  the  United  Kingdom,  or  Isle  of  Man,  as  effectually  as  if  the  iar  places?" 
patent  were  originally  granted  to  extend  to  that  place  or  part 

only. 

37.  If  a  patent  is  lost  or  destroyed,  or  its  non-production  is  LOSS  or  de- 
accounted  for  to  the  satisfaction  of  the  Comptroller,  the  Comp-  partent.°n ' 
troller  may  at  any  time  cause  a  duplicate  thereof  to  be  sealed. 

38.  The  law  officers  may  examine  witnesses  on  oath  and  ad-  Proceedings 
minister  oaths  for  that  purpose  under  this  part  of  this  Act,  and  beforelaw 
may  from  time  to  time  make,  alter,  and   rescind  rules  regu-  °  cer' 
lating  references  and  appeals  to  the  law  officers  and  the  practice 

and  procedure  before  them  under  this  part  of  this  Act ;  and,  in 
any  proceeding  before  either  of  the  law  officers  under  this  part 
of  this  Act,  the  law  officer  may  order  costs  to  be  paid  by  either 
party,  and  any  such  order  may  be  made  a  rule  of  the  Court. 

39.  The  exhibition  of  an  invention  at  an  industrial  or  inter-  Exhibition 
national  exhibition,  certified  as  such  by  the  Board  of  Trade,  or  winter-"8 
the  publication  of  any  description  of  the  invention  during  the  hTbition'not 
period  of  the  holding  of  the  exhibition,  or  the  use  of  the  inven-  p^nt™1"'6 

rights.1 

1  As  to  the  extension  of  these  provisions,  with  certain  modifications,  to 
industrial  and  international  exhibitions  held  out  of  the  United  Kingdom, 
see  sect.  3  of  the  Act  of  188G. 


31  :    4«  AND  47   VICT.  C.  47 


JovMi.ii> 


' 
MUM.-UIII. 


Power  to 

if,  ..•• 
model*  on 


F.  r.  ._•:. 
•   *;u 


w.:..r.- .; 


for  tli.-  |>ur|)o.si>  of  the  exhibition  in  the  place  where  the 
exhibition  is  held.  or  the  use  of  .lion  i  luring  the  period 

of  the  holding  of  the  exhibition  by  any  person  elsewhere,  without 
the  privity  or  consent  of  the  inventor,  shall  not  prejudice  the 
right  of  the  inventor  or  his  legal  personal  representative  to  apply 
for  and  obtain  provisional  protection  and  a  patent  in  respect  of 
tin  invention  or  the  validity  of  any  patent  granted  on  the  appli- 
cation, provided  that  both  the  following  conditions  are  complied 
with,  namely:  — 

(a)  The  exhibitor  must,  before  exhibiting  the  invention,  give 

the  Comptroller  the  prescribed  notice  of  his  intention 
to  do  so  ;  and 

(b)  The  application  for  a  patent  must  be  made  before  or 

within  six  months  from  the  date  of  the  opening  of  the 
exhibition. 

40.  (1)  The  Comptroller  shall  cause  to  be  issued  periodically 
an  illustrated  journal  of  patented  inventions,  as  well  as  reports 
of  patent  cases  decided  by  courts  of  law,  and  any  other  infor- 
mation  that  the  Comptroller  may  deem  generally  useful  or 
important. 

•1  Provision  shall  be  made  by  the  Comptroller  for  keeping 
on  sale  copies  of  such  journal,  and  also  of  all  complete  specifi- 
cations of  patents  for  the  time  being  in  force,  with  their  accom- 
panying drawings,  if  any. 

(8)  The  Comptroller  shall  continue,  in  such  form  as  he  may 
deem  expedient,  the  indexes  and  abridgments  of  specifications 
hitherto  published,  and  shall  from  time  to  time  prepare  and 
publish  such  other  indexes,  abridgments  of  specifications, 
catalogues,  and  other  works  relating  to  inventions,  as  he  may 
see  fit. 

41.  The  control   and   management  of  the   existing   Patent 
Museum  and  its  contents  shall,  from  and  after  the  commence- 
ment of  this  Act,  be  transferred  to  and  vested  in  the  Department 
of  Science  and  Art,  subject  to  such  directions  as  her  Majesty  in 
Council  may  see  fit  to  give. 

The  Department  of  Science  and  Art  may  at  any  time 
require  a  patentee  to  furnish  them  with  a  model  of  his  invention 
on  payment  to  the  patentee  of  the  cost  of  the  manufacture  of 
the  model  :  the  amount  to  be  settled,  in  case  of  dispute,  by  the 
Board  of  Trade. 

48.  (1)  A  patent  shall  not  prevent  the  use  of  an  invention 
for  the  purposes  of  the  navigation  of  a  foreign  vessel  within  the 
jurisdiction  of  any  of  her  Majesty's  Courts  in  the  United  King- 


STATUTES:    46  AND  47  VICT.   C.   57  351 

dom  or  Isle  of  Man,  or  the  use  of  an  invention  in  a  foreign 
vessel  within  that  jurisdiction,  provided  it  is  not  used  therein  for 
or  in  connection  with  the  manufacture  or  preparation  of  anything 
intended  to  be  sold  in  or  exported  from  the  United  Kingdom  or 
Isle  of  Man. 

(2)  But  this  section  shall  not  extend  to  vessels  of  any  foreign 
state  of  which  the  laws  authorise  subjects  of  such  foreign  state, 
having  patents  or  like  privileges  for  the  exclusive  use  or  exercise 
of  inventions  within  its  territories,  to  prevent  or  interfere  with 
the  use  of  such  inventions  in  British  vessels  while  in  the  ports  of 
such  foreign  state,  or  in  the  waters  within  the  jurisdiction  of  its 
Courts,  where  such  inventions  are  not  so  used  for  the  manufacture 
or  preparation  of  anything  intended  to  be  sold  in  or  exported  from 
the  territories  of  such  foreign  state. 

44.  (1)  The  inventor  of  any  improvement  in  instruments  or  Assignment 
munitions  of  war,  his  executors,  administrators,  or  assigns  (who  forSwar'ofy 
are  in  this  section  comprised  in  the  expression '  the  inventor ')  may   y^-^j11" 
(either   for   or  without  valuable   consideration)   assign   to   her 
Majesty's  Principal  Secretary  of  State  for  the  War  Department 
(hereinafter  referred  to  as  the  Secretary  of  State),  on  behalf  of 
her  Majesty,  all  the  benefit  of  the  invention  and  of  any  patent 
obtained  or  to  be  obtained  for  the  same ;  and  the  Secretary  of 
State  may  be  a  party  to  the  assignment. 

(2)  The  assignment  shall  effectually  vest  the  benefit  of  the 
invention  and  patent  in  the  Secretary  of  State  for  the  time  being 
on  behalf  of  her  Majesty,  and  all  covenants  and  agreements 
therein  contained  for  keeping  the  invention  secret  and  otherwise 
shall  be  valid  and  effectual  (notwithstanding  any  want  of  valuable 
consideration),  and  may  be  enforced  accordingly  by  the  Secretary 
of  State  for  the  time  being. 

(8)  Where  any  such  assignment  has  been  made  to  the  Secre- 
tary of  State,  he  may  at  any  time  before  the  application  for  a 
patent  for  the  invention,  or  before  publication  of  the  specification 
or  specifications,  certify  to  the  Comptroller  his  opinion  that,  La  the 
interest  of  the  public  service,  the  particulars  of  the  invention  and 
of  the  manner  in  which  it  is  to  be  performed  should  be  kept  secret. 

(4)  If  the  Secretary  of  State  so  certifies,  the  application  and 
specification  or  specifications,  with  the  drawings,  if  any,  and 
any  amendment  of  the  specification  or  specifications,  and  any 
copies  of  such  documents  and  drawings,  shall,  instead  of  being 
left  in  the  ordinary  manner  at  the  Patent  Office,  be  delivered  to 
the  Comptroller  in  a  packet  sealed  by  authority  of  the  Secretary 
of  State. 


3.VJ  SI.'.  57 

('»)  Such  packet  shall,  until   the   expiration   of  the  term  OT 
ided  term  during  which  a  patent  fur  tin-  in\>  iy  be 

in  fa,-,-.  he  Kept  sealed  b\  :ptroll.  r.  and  shall  not  be 

opened  save  under  the  authority  of  an  order  of  the  Secret" 
State  or  of  the  law  offic 

(G)  Such  sealed  packet  shall  be  delivered  at  any  time  during 
the  continuance  of  the  patent  to  any  person  authorised  by 
writing  under  the  hand  of  the  Secretary  of  State  to  receive  the 
same,  and  -hall  if  n  turned  to  the  Comptroller  be  again  kept 
sealed  by  him. 

(7)  On  the  expiration  of  the  term  or  extended  term  of 
patent,  such  sealed  packet  shall  be  delivered  to  any  person 
authorised  by  writing  under  tin   hand  of  the  Secretary  of  State 
to  receive  it. 

(8)  Where  the  Secretary  of  State  certifies  as  aforesaid,  after 
an  application  for  a  patent  has  been  left  at  the  Patent  Office,  but 
before  the  publication  of  the  specification  or  specifications,  tho 
application,  specification  or  specifications,  with  the  drawings,  if 
any,  shall  be  forthwith  placed  in  a  packet  sealed  by  authority  of 
the  Comptroller,  and  such  packet  shall  be  subject  to  the  foregoing 
provisions  respecting  a  packet  scaled  by  authority  of  the 

of  State. 

(9)  No  proceeding  by  petition  or  otherwise  shall  lie  for  r. 
cation  of  a  patent  granted  for  an  invention  in  relation  to  which 
the  Secretary  of  State  has  certified  as  aforesaid. 

(10)  No  copy  of  any  specification  or  other  document  or  draw- 
ing, by  this  section  required  to  be  placed  in  a  sealed  packet,  shall 
in  any  manner  whatever  be  published  or  open  to  the  inspection 
of  the  public,  but  save  as  in  this  section  otherwise  directed,  the 
provisions  of  this  part  of  this  Act  shall  apply  in  respect  of  any 
such  invention  and  patent  as  aforesaid. 

(11)  The  Secretary  of  State  may,  at  any  time  by  writing 
under  his  hand,  waive  the  benefit  of  this  section  with  respect  to 
any  particular  invention,  and  the  specifications,  documents,  and 
drawings  shall  be  thenceforth  kept  and  dealt  with  in  the  ordinary 
way. 

(12)  The  communication  of  any  invention  for  any  improve- 
ment in  instruments  or  munitions  of  war  to  the  Secretary  of 
State,  or  to  any  person  or  persons  authorised  by  him  to  iir. 
gate  the  same  or  the  merits  thereof,  shall  not,  nor  shall  anything 
be  done  for  the  purposes  of  the  investigation,  be  deemed  use  or 
publication  of  such  invention  so  as  to  prejudice  the  grant  or 
validity  of  any  patent  for  the  same. 


STATUTES :    46   AND   47   VICT.   C.   57  '  353 

Existing  Patents. 

45.  (1)  The  provisions  of  this  Act  relating  to  applications  Provisions 
for  patents  and  proceedings  thereon  shall  have  effect  in  respect  existing 
only  of  applications  made  after  the  commencement  of  this  Act.      r"t( 

(2)  Every  patent  granted  before  the  commencement  of  this 
Act,  or  on  an  application  then  pending,  shall  remain  unaffected 
by  the  provisions  of  this  Act  relating  to  patents  binding  the 
Crown,  and  to  compulsory  licences. 

(3)  In  all  other  respects  (including  the  amount  and  time  of 
payment  of  fees)  this  Act  shall  extend  to  all  patents  granted 
before  the  commencement  of  this  Act,  or  on  application  then 
pending,  in  substitution  for   such    enactments  as  would  have 
applied  thereto  if  this  Act  had  not  been  passed. 

(4)  All  instruments  relating  to  patents  granted  before   the 
commencement  of  this  Act  required  to  be  left  or  filed  in  the 
Great  Seal  Patent  Office  shall  be  deemed  to  be  so  left  or  filed  if 
left  or  filed  before  or  after  the  commencement  of  this  Act  in  the 
Patent  Office. 

Definitions. 

46.  In  and  for  the  purposes  of  this  Act —  Definition* 
4  Patent '  means  letters  patent  for  an  invention  ;                         patentee,' 

4  Patentee '  means  the  person  for  the  time  being  entitled  to  tkm!m' 
the  benefit  of  a  patent ; 

4  Invention '  means  any  manner  of  new  manufacture  the 
subject  of  letters  patent  and  grant  of  privilege  within  section  six 
of  the  Statute  of  Monopolies  (that  is,  the  Act  of  the  twenty-first 
year  of  the  reign  of  King  James  the  First,  chapter  three,  intituled 
4  An  Act  concerning  monopolies  and  dispensations,  with  penal 
laws  and  the  forfeiture  thereof),  and  includes  an  alleged 
invention. 

In  Scotland  '  injunction  '  means  '  interdict.' 

[Sections  forty-seven  to  sixty-one  relate  exclusively  to  the 
Eegistration  of  Designs,  and  sections  sixty-two  to  eighty-one 
exclusively  to  the  Eegistration  of  Trade  Marks.] 


PAKT   V. — GENERAL. 
Patent  Office  and  Proceedings  thereat. 

82.  (1)  The  Treasury  may  provide  for  the  purposes  of  this  Patent 
Act  an  office,  with  all  requisite  buildings  and  conveniences,  which  ° 
shall  be  called,  and  is  in  this  Act  referred  to  as,  the  Patent  Office. 

A  A 


STATUTES:    46  AND  47  VICT. 


s.  .  ,  • 
I-..-.  •) 

M 


Tru-t  n-.t  to 
be  entered 


Reftmlto 

k-r.il:!  ;M'.  I:'. 

«tc^  in  cer- 


and  trmn«- 
mteloii<  in 
regUten. 


(2)  Until  a  new  Patent  Office  is  provided,  the  offices  of  the 
Commissioners  of  Patents  for  inventions  and  for  the  registration 
of  designs  and  trade  marks  existing  at  the  commencement  of 
Act  shall  be  the  Patent  Office  within  the  meaning  of 

(8)  The  Patent  Office  shall  be  under  the  immediate  control 
of  an  officer  called  the  Comptroller-General  of  Patents,  Designs, 
and  Trade  Marks,  who  shall  act  under  the  superintendence  and 
direction  of  the  Board  of  Trade. 

(4)  Any  act  or  thing  directed  to  be  done  by  or  to  the  Comp- 
troller may,  in  his  absence,  be  done  by  or  to  any  officer  for  the 
time  being  in  that  behalf  authorised  by  the  Board  of  Trade. 

88.  (1)  The  Board  of  Trade  may  at  any  time  after  the  passing 
of  this  Act,  and  from  time  to  time,  subject  to  the  approval  of  the 
Treasury,  appoint  the  Comptroller-General  of  Patents,  Designs, 
and  Trade  Marks,  and  so  many  examiners  and  other  officers  and 
clerks,  with  such  designations  and  duties  as  the  Board  of  Trade 
think  fit,  and  may  from  time  to  time  remove  any  of  those  officers 
and  clerks. 

(2)  The  salaries  of  those  officers  and  clerks  shall  be  appointed 
by  the  Board  of  Trade,  with  the  concurrence  of  the  Treasury,  and 
the  same,  and  the  other  expense?  of  the  execution  of  this  Act, 
shall  be  paid  out  of  money  provided  by  Parliament. 

84.  There  shall  be  a  seal  for  the  Patent  Office,  and  im- 
pressions thereof  shall  be  judicially  noticed  and  admitted  in 
evidence. 

85.  There  shall  not  be  entered  in  any  register  kept  under  this 
Act,  or  be  receivable  by  the  Comptroller,  any  notice  of  any  trust 
expressed,  implied,  or  construct! 

86.  The  Comptroller  may  refuse  to  grant  a  patent  for  an  in- 
vention, or  to  register  a  design  or  trade  mark,  of  which  the  use 
would,  in  his  opinion,  be  contrary  to  law  or  morality. 

87.'  Where  a  person  becomes  entitled  by  assignment,  trans- 
mission, or  other  operation  of  law  to  a  patent,  the  Comptroller 
shall,  on  request,  and  on  proof  of  title  to  his  satisfaction,  cause 
the  name  of  such  person  to  be  entered  as  proprietor  of  the  patent 
in  the  Register  of  Patents.  The  person  for  the  time  being  entered 
in  the  Register  of  Patents  as  proprietor  of  a  patent  shall,  subject 
to  the  provisions  of  this  Act  and  to  any  rights  appearing  from 
such  register  to  be  vested  in  any  other  person,  have  power 


1  Sections  87,  88,  and  90  are  here  given  as  amended  by  sections  21,  22, 
and  23  of  the  Act  of  1888. 


STATUTES:    46  AND  47  VICT.  C.  57  355 

absolutely  to  assign,  grant  licences  as  to,  or  otherwise  deal  with, 
the  same,  and  to  give  effectual  receipts  for  any  consideration  for 
such  assignment,  licence,  or  dealing :  Provided  that  any  equities 
in  respect  of  such  patent  may  be  enforced  in  like  manner  as  in 
respect  of  any  other  personal  property. 

88. '  Every  register  kept  under  this  Act  shall  at  all  convenient  inspection  of 
times  be  open  to  the  inspection  of  the  public,  subject  to  the  pro-  fronfre^ 
visions  of  this  Act  and  to  such  regulations  as  may  be  prescribed ;  gisters* 
and  certified  copies,  sealed  with  the  seal  of  the  Patent  Office,  of 
any  entry  in  any  such  register  shall  be  given  to  any  person 
requiring  the  same  on  payment  of  the  prescribed  fee. 

89.  Printed  or  written  copies  or  extracts,  purporting  to  be  Sealed  copies 
certified  by  the  Comptroller  and  sealed  with  the  seal  of  the  Patent  cli^LHn 
Office,  of  or  from  patents,  specifications,  disclaimers,  and  other  evidence- 
documents  in  the  Patent  Office,  and  of  or  from  registers  and 
other  books  kept  there,  shall  be  admitted  in  evidence  in  all  courts 
in  her  Majesty's  dominions,  and  in  all  proceedings,  without  further 
proof  or  production  of  the  originals. 

90.1  (1)  The  Court  may,  on  the  application  of  any  person  nectmcatio. 
aggrieved  by  the  omission  without  sufficient  cause  of  the  name  by'c^StT* 
of  any  person  or  of  any  other  particulars  from  any  register  kept 
under  this  Act,  or  by  any  entry  made  without  sufficient  cause  in 
any  such  register,  make  such  order  for  making,  expunging,  or 
varying  the  entry  as  the  Court  thinks  fit;   or  the  Court  may 
refuse  the  application  ;  and  in  either  case  may  make  such  order 
with  respect  to  the  costs  of  the  proceedings  as  the  Court  thinks 
fit. 

(2)  The  Court  may,  in  any  proceeding  under  this  section, 
decide  any  question  that  it  may  be  necessary  or  expedient  to 
decide  for  the  rectification  of  a  register,  and  may  direct  an  issue 
to  be  tried  for  the  decision  of  any  question  of  fact,  and  may  award 
damages  to  the  party  aggrieved. 

(3)  Any  order  of  the  Court  rectifying  a  register  shall  direct 
that   due  notice   of  the  rectification   be  given  to   the   Comp- 
troller. 

91.  The  Comptroller  may,  on  request  in  writing,  accompanied  Power  for 

•1,1  .,      i    f  Comptroller 

by  the  prescribed  iee —  to  correct 

(a)  Correct  any  clerical  error  in  or  in  connection  with   an  e 

application  for  a  patent ;  or 

(b)  Correct  any  clerical  error  in  the  name,  style,  or  address 

of  the  registered  proprietor  of  a  patent. 

1  See  note  on  previous  page. 

A  A   2 


STATUTES:    46  AND    *;    \i 

(c)  Cai.  utry  or  part  of  the  entry  of  a  trade  mark  ou 

the  register  :  applicant  aocomj 

request  by  a  statutory  declaration  made  by  himself, 
stating  his  name,  address,  and  calling,  and  that  he  in 
the  person  whose  name  appears  ou  the  register  as  the 
proprietor  of  the  said  trade  mark. 

[Section  92  relates  to  the  alteration  of  a  registered  trade  mark.] 

r»i«ifti»uoB         98.  If  any  person  makes  or  causes  to  be  made  a  false  enti 
1    any  register  kept  under  this  Act,  or  a  writing  falsely  purp 


to  be  a  copy  of  an  entry  in  any  such  register,  or  produces  or 

rs,  or  causes  to  be  produced  or  tend*  red.  m  « \;<i.  n> , 
writing,  knowing  the  entry  or  writing  to  be  false,  he  shall  !><• 
guilty  of  ft  misdemeanor. 

Where  any  <i  ny  power  is  by  this  Act  given  to 

mrypowert-r  Comptroller,  he  shall  not  that  power  adversely  to  the 

Comptroller,   appi^am   for  a   patent,  or  for  amendment  of  a  sp« 

without,  if  so  required  within  the  DM  by  the  apj 

giving  the  applicant  an  opportunity  of  being  heard  personally  or 
by  his  agent. 

rower  of  The  Comptroller  may.  in  any  case  of  doubt  or  difficulty 

touirai'rv-  arising  in  the  administration  of  any  of  the  provisions  of  th. 
|*g^Uw    apply  co  either  of  the  law  officers  for  directions  in  the  ma: 
,te,,f  tit-ate  purporting   to  be  under  the  hand  of 

. "    Comptroller   as   to   ai  or   thing   which    he   is 

authorised  by  this  Act,  or  any  general  rules  made  thereunder,  to 
make  or  do,  shall  be  primu-facie  evidence  of  the  entry  having 
:  made,  and  of  the  contents  thereof,  and  of  the  matter  or 
thing  having  been  done  or  left  undone. 

A;  i  •; ,-..: :,.y .,  97.  (1)  Any  application,  notice,  or  other  document  autho 
I  v  jv  :.  or  required  to  be  left,  made,  or  given  at  the  Patent  Office,  or  t<> 
the  Comptroller,  or  to  any  other  person  under  this  Act  may  1  it- 
sent  by  a  prepaid  letter  through  the  post ;  and  if  so  sent  shall  !>«• 
deemed  to  have  been  left,  made,  or  given  respectively  at  the  time- 
when  the  letter  containing  the  same  would  be  delivered  in  the 
ordinary  course  of  post. 

(2)  In  proving  such  service  or  sending,  it  shall  be  sufficient 
to  prove  that  the  letter  was  properly  addressed  and  put  into  the 
the  post. 

Pmruion  M          98.  Whenever  the  last  day  fixed  \>\  this  Act,  or  by  any  rule 
for  the  time  being  in  force,  for  leaving  any  document  or  paying 
JE3J£°U      any  fee  at  the  Patent  Office  shall  fall  on  Christmas  day, 
Friday,  or  on  a  Saturday  or  Sunday,  or  any  day  observe*; 
holiday  at  the  Bank  of  England,  or  any  day  observed  as  a  day 


STATUTES:    46  AND   47  VICT.   C.  57  357     • 

of  public  fast  or  thanksgiving,  herein  referred  to  as  excluded 
days,  it  shall  be  lawful  to  leave  such  document  or  to  pay  such 
fee  on  the  day  next  following  such  excluded  day,  or  days  if  two 
or  more  of  them  occur  consecutively. 

99.  If  any  person  is,  by  reason  of  infancy,  lunacy,  or  other  Decoration 
inability,  incapable  of  making  any  declaration  or  doing  anything  uinuticfctc. 
required  or  permitted  by  this  Act  or  by  any  rules  made  under  the 
authority  of  this  Act,  then  the  guardian  or  committee,  if  any,  of 

such  incapable  person,  or,  if  there  be  none,  any  person  appointed 
by  any  Court  or  judge  possessing  jurisdiction  in  respect  of  the 
property  of  incapable  persons,  upon  the  petition  of  any  person  on 
behalf  of  such  incapable  person,  or  of  any  other  person  interested 
in  the  making  such  declaration  or  doing  such  thing,  may  make 
such  declaration,  or  a  declaration  as  nearly  corresponding  thereto 
as  circumstances  permit,  and  do  such  thing  in  the  name  and 
on  behalf  of  such  incapable  person,  and  all  acts  done  by  such 
substitute  shall  for  the  purposes  of  this  Act  be  as  effectual  as  if 
<lone  by  the  person  for  whom  he  is  substituted. 

100.  Copies  of  all  specifications,  drawings,  and  amendments  Trans- 
left  at  the  Patent   Office  after  the  commencement  of  this  Act,  certmeli0 
printed  for  and  sealed  with  the  seal  of  the  Patent  Office,  shall  be  copfeof 
transmitted  to  the  Edinburgh  Museum  of  Science  and  Art,  and  t[^fi££r 
to  the  Enrolments  Office  of  the  Chancery  Division  in  Ireland, 

and  to  the  Eolls  Office  in  the  Isle  of  Man,  within  twenty-one 
days  after  the  same  shall  respectively  have  been  accepted  or 
allowed  at  the  Patent  Office  ;  and  certified  copies  of  or  extracts 
from  any  such  documents  shall  be  given  to  any  person  requiring 
the  same  on  payment  of  the  prescribed  fee  ;  and  any  such  copy 
or  extract  shall  be  admitted  in  evidence  in  all  Courts  in  Scotland 
and  Ireland  and  in  the  Isle  of  Man  without  further  proof  or 
production  of  the  originals. 

101.  (1)  The  Board  of  Trade  may  from  time  to  time  make  Power  for 
such  general  rules  and  do  such  things  as  they  think  expedient,   TniTi'e  to 

Subject  to  the  provisions  Of  this  Act —  general  rules 

(a)  For  regulating  the  practice  of  registration  under  this  Act ;   [jjgg^y~ 

(b)  For  classifying  goods  for   the  purposes  of  designs  and  "[ 

trade  marks  ;  »<-ss  "r 

(c)  For    making   or    requiring  duplicates   of   specifications,   office. 

amendment  (sic),  drawings,  and  other  documents  ; 
{d)  For  securing  and  regulating  the  publishing  and  selling 
of  copies,  at  such  prices  and  in  such  manner  as  the 
Board  of  Trade  think  fit,  of  specifications,  drawings, 
amendments,  and  other  documents  ; 


STATUTES:    4«  AND  47  V1CT.  C.  47 

(«)  For  securing  and  regulating  the  making,  printing,  pub- 
lishing, and  selling  of  indexes  to,  and  abridgment* 
specifications  and  other  documents  in  the  Patent 
Office;  and  providing  for  the  inspection  of  indexes 
and  abridgments  and  other  documents ; 
(/)  For  regulating  (with  the  approval  of  the  Treasury) 

presentation  of  copies  of  Patent  Office  publications  to 
patentees  and  to  public  authorities,  bodies,  and  insti- 
tutions at  home  and  abroad ; 

(g)  Generally  for  regulating  the  business  of  the  Patent  Office, 
and  all  things  by  this  Act  placed  under  the  direction 
or  control  of  the  Comptroller,  or  of  the  Board  of 
Trade. 

(2)  Any  of  the  forms  in  the  1  •  ilule  to  this  Act  may 

be  altered  or  amended  by  rules  made  by  the  Board  as  aforesaid. 
(8)  General  rules  may  be  made  under  this  section  at  any 
time  after  the  passing  of  this  Act,  but  not  so  as  to  take  effect 
before  the  commencement  of  this  Act,  and  shall  (subject  as 
hereinafter  mentioned)  be  of  the  same  effect  as  if  they  were  con- 
tained in  this  Act,  and  shall  be  judicially  noticed. 

(4)  Any  rules  made  in  pursuance  of  this  section  shall  be  laid 
before  both  Houses  of  Parliament,  if  Parliament  be  in  session  at 
the  time  of  making  thereof,  or,  if  not,  then  as  soon  as  practicable 
after  the  beginning  of  the  then  next  session  of  Parliament,  and 
they  shall  also  be  advertised  twice  in  the  official  journal  to  be 
issued  by  the  Comptroller. 

(5)  If  either  House  of  Parliament,  within  the  next  forty  days 
after  any  rules  have  been  so  hud  before  such  House,  resolve  that 
such  rules,  or  any  of  them,  ought  to  be  annulled,  the  same  shall, 
after  the  date  of  such  resolution,  be  of  no  effect,  without  pre- 
judice to  the  validity  of  anything  done  in  the  meantime  under 
such  rules  or  rule,  or  to  the  making  of  any  new  rules  or  rule. 

Anmai  102.  The  Comptroller  shall,  before  the  first  day  of  June  in 

Co«j*roUer.  every  year,  cause  a  report  respecting  the  execution  by  or  under 
him  of  this  Act  to  be  laid  before  both  Houses  of  Parliament,  and 
therein  shall  include  for  the  year  to  which  each  report  relates  all 
general  rules  made  in  that  year  under  or  for  the  purposes  of  this 
Act,  and  an  account  of  all  fees,  salaries,  and  allowances,  and 
other  money  received  and  paid  under  this  Act. 

Proceeding*          102A.1  (1)  All  things  required  or  authorised  under  this  Act  to 
ir!.";'  be  done  by,  to,  or  before  the  Board  of  Trade  may  be  done  by,  to, 

1  This  section  was  added  to  the  principal  Act  by  the  25th  section  of  the 
Act  of  1888. 


STATUTES:    46  AND  47   VICT.   C.   5?  359 

or  before  the  President  or  a  secretary  or  an  assistant-secretary  of 
the  Board. 

(2)  All  documents  purporting  to  be  orders  made  by  the  Board 
of  Trade  and  to  be  sealed  with  the  seal  of  the  Board,  or  to  be 
signed  by  a  secretary  or  assistant-secretary  of  the  Board,  or  by 
any  person  authorised  in  that  behalf  by  the  President  of  the 
Board  shall  be  received  in  evidence,  and  shall  be  deemed  to  be 
such  orders  without  further  proof,  unless  the  contrary  is  shown. 

(3)  A   certificate,  signed  by  the   President  of  the  Board  of 
Trade,  that  any  order  made  or  act  done  is  the  order  or  act  of  the 
Board,  shall  be  conclusive  evidence  of  the  fact  so  certified. 

International  and  Colonial  Arrangements. 

103.  [As  amended  by  the  6th  sect,  of  the  Act  of  1885.]  (1)  If  inter-^ 
her  Majesty  is   pleased   to   make   any   arrangement  with  the  arange- 
Government  or  Governments  of  any  foreign  state  or  states  for  po'tection  of 
mutual  protection  of  inventions,  then  any  person  who  has  applied  " 
for  protection  for  any  invention  in  any  such  state  shall  be  en- 
titled to  a  patent  for  his  invention  under  this  Act  in  priority  to 
other  applicants ;  'and  such  patent  shall  have  the  same  date  as 
the  date  of  the  application  in  such  foreign  state. 

Provided  that  his  application  is  made  in  the  case  of  a  patent 
within  seven  months  from  his  applying  for  protection  in  the 
foreign  state  with  which  the  arrangement  is  in  force. 

Provided  that  nothing  in  this  section  contained  shall  entitle 
the  patentee  to  recover  damages  for  infringements  happening 
prior  to  the  date  of  the  actual  acceptance  of  his  complete  speci- 
fication in  this  country,  as  the  case  may  be. 

(2)  The  publication  in  the  United  Kingdom  or  the  Isle  of 
Man  during  the  respective  periods  aforesaid  of  any  description  of 
the  invention,  or  the  use  therein  during  such  periods  of  the  inven- 
tion, shall  not  invalidate  the  patent  which  may  be  granted  for 
the  invention. 

(3)  The  application  for  the  grant  of  a  patent  under  this  sec- 
tion must  be  made  in  the  same  manner  as  an  ordinary  applica- 
tion under  this  Act. 

(4)  The  provisions  of  this  section  shall  apply  only  in  the  case 
of  those  foreign  states  with  respect  to  which  her  Majesty  shall 
from  time  to  time  by  Order  in  Council  declare  them  to  be  applic- 
able, and  so  long  only  in  the  case  of  each  state  as  the  Order  in 
Council  shall  continue  in  force  with  respect  to  that  state. 

104.  (1)  Where  it  is  made  to  appear  to  her  Majesty  that  the  colonies  and 

India. 


STATUTES:    4 


•:.   67 


Pen»:tyon 

J£mf>- 
'  J 


string  for 


Legi  '     '  '*!»  P<MMMIOD  ha*  made  satisfactory  pro- 

•;  action  of  inventions,  patented  in  thiioo 
all  be  lawful  for  her  Majesty  from  time  t<>  time,  by  Or 
'       iicil,  to  apply  the  provisions  of  the  last   preceding  B- 
\vith  such  \uriations  or  additions.  if  any,  as  to  her  Majesty  in 
Council  may  seem  fit,  to  such  British  Possession. 

An  Onl  .cil  undi-r  this  Act  shall,  from  a  date  to 

i  for  the  purpose  in  the  Order,  take  effect  as  if  its 

is  had  been  contained  in  tl.  ut  it  shall  be  law- 

ful for  her  Majesty  in  Council  to  revoke  &\       '  <mncil 

made  under  ; 

Offence*. 

105.  (1)  Any  person  who  represents  that  any  article  sold  hy 
him  is  a  patented  article,  when  no  patent  has  been  granted  for 
tne  sara*!  shall  be  Hable  for  every  offence  on  summary  mir 
to  a  fine  not  exceeding  five  pounds. 

A  person  shall  be  deemed,  for  the  purposes  of  this  enact- 
ment, to  represent  that  an  article  is  patented  if  he  sell-;  tin- 
article  with  the  word  '  patent,'  '  patented,'  or  any  word  or  words 
expressing  or  implying  that  a  patent  lias  been  obtained  for  the 
article  stamp  -ed  on,  or  otherwise  applied 

to,  the  article. 

10G.  Any  person  who,  without  the  authority  of  her  Majesty. 
or  any  of  the  Royal  Family,  or  of  any  Govern  im-nt  1  ><-partment, 
assumes  or  uses  in  connection  with  any  trad*-,  business,  calling, 
or  profession,  the  royal  arms,  or  arms  so  nearly  resembling  the 
same  as  to  be  calculated  to  deceive,  in  such  a  manner  as  to  be 
calculated  to  lead  other  persons  to  believe  that  he  is  carrying  on 
his  trade,  business,  calling,  or  profession  by  or  under  such  au- 
thority as  aforesaid,  shall  be  liable  on  summary  conviction  to  a 
fine  not  exceeding  twenty  pounds. 

Scotlawl,  Ireland,  dc. 

107.  In  any  action  for  infringement  of  a  patent  in  Scotland 
the  provisions  of  this  Act.  with  respect  to  calling  in  the  aid  of  an 
assessor,  shall  apply,  and  the  action  shall  be  tried  without  a  jury, 
unless  the  Court  shall  otherwise  direct  ;  but  otherwise  nothing 
shall  affect  the  jurisdiction  and  forms  of  process  of  the  Courts  in 
Scotland  in  such  an  action,  or  in  any  action  or  proceeding 
respecting  a  patent  hitherto  competent  to  those  Courts. 

For  the  purposes  of  this  section  '  Court  of  Appeal  '  shall  mean 
any  Court  to  which  such  action  is  appealed. 


STATUTP:S:  46  AND  47  VICT.  c.  57  361 

108.  In  Scotland  any  offence  under  this  Act  declared  to  be  summary 
punishable  on  summary  conviction  may  be  prosecuted  in  the  ^"s^otiand! 
Sheriff  Court. 

109.  (1)  Proceedings  in  Scotland  for  revocation  of  a  patent  Proceedings 
shall  be  in  the  form  of  an  action  of  reduction  at  the  instance  of  tion'of00"1 
the  Lord  Advocate,  or  at  the  instance  of  a  party  having  interest  scothm'i! 
with  his  concurrence,  which  concurrence  may  be  given  on  just 

cause  shown  only. 

(2)  Service  of  all  writs  and  summonses  in  that  action  shall 
be  made  according  to  the  forms  and  practice  existing  at  the  com- 
mencement of  this  Act. 

110.  All   parties   shall,   notwithstanding   anything   in   this  Reservation 
Act,  have  in  Ireland  their  remedies  under  or  in  respect  of  a  in  iroumd. 
patent  as  if  the  same  had  been  granted  to  extend  to  Ireland 

only. 

111.  (1)  The  provisions  of  this  Act  conferring  a  special  juris-  General 
diction  on  the  Court  as  denned  by  this  Act  shall  not,  except  so  j^Juftion 
far  as  the  jurisdiction  extends,  affect  the  jurisdiction  of  any  Court  °1Court3- 
in  Scotland  or  Ireland  in  any  proceedings  relating  to  patents,  or 

to  designs,  or  to  trade  marks  ;  and,  with  reference  to  any  such 
proceedings  in  Scotland,  the  term  '  the  Court '  shall  mean  any 
Lord  Ordinary  of  the  Court  of  Session,  and  the  term  '  Court  of 
Appeal '  shall  mean  either  Division  of  the  said  Court ;  and,  with 
reference  to  any  such  proceedings  in  Ireland,  the  terms  '  the 
Court '  and  '  the  Court  of  Appeal '  respectively  mean  the  High 
Court  of  Justice  in  Ireland  and  her  Majesty's  Court  of  Appeal  in 
Ireland. 

(2)  If  any  rectification  of  a  register  under  this  Act  is  required 
in  pursuance  of  any  proceeding  in  a  Court  in  Scotland  or  Ireland, 
a  copy  of  the  order,  decree,  or  other  authority  for  the  rectifica- 
tion shall  be  served  on  the  Comptroller,  and  he  shall  rectify  the 
register  accordingly. 

112.  This  Act  shall  extend  to  the  Isle  of  Man,  and —  isieof  Man. 

(1)  Nothing  in  this  Act  shall  affect  the  jurisdiction  of  the 

Courts  in  the  Isle  of  Man,  in  proceedings  for  infringe- 
ment, or  in  any  action  or  proceeding  respecting  a 
patent,  design,  or  trade  mark  competent  to  those 
Courts ; 

(2)  The  punishment  for  a  misdemeanor  under  this  Act  in  the 

Isle  of  Man  shall  be  imprisonment  for  any  term  not 
exceeding  two  years,  with  or  without  hard  labour,  and 
with  or  without  a  fine  not  exceeding  one  hundred 
pounds,  at  the  discretion  of  the  Court ; 


STATUTES:    46  AM>   47    VICT.  C.  47 


(8)  Any  offence  under  this  Act  committal  in  the  Isle  of  Man 

winch  would  in  England  be  punishable  on  summary 
nmvii -tion  may  be  prosecuted,  and  any  fine  in  respect 
thereof  recovered,  at  tin-  instance  of  any  person 
aggrieved,  in  the  manner  in  which  offences  punish* 
able  on  summary  conviction  may  for  the  time  being  be 
prosecuted. 


taring  for 

E22KT 


ncfatento 

I..     ,..::..   1 


Sarim?  for 

rxi«ting 

rule*. 


Saving  for 
prerogatire. 


sal ;  Transitional  Provision*  ;  Savings. 

118.  The  enactments  described  in  the  Third  Schedule  to 
this  Act  are  li.  r.-l.y  repealed.  But  this  repeal  of  enactments 
shall  not 

(a)  Affect  the  past  operation  of  any  of  those  enactments,  or 

any  patent  granted,  or  application  pending,  or  ap- 
pointment made,  or  compensation  granted,  or  order 
or  direction  made  or  given,  or  right,  privilege,  obliga- 
tion, or  liability  acquired,  accrued,  or  incurred,  or  any- 
thing duly  done  or  suffered  under  or  by  any  of  those 
enactments  before  or  at  the  commencement  of  thi- 
Act;  or 

(b)  Interfere  with  the  institution  or  prosecution  of  any  action 

or  proceeding,  civil  or  criminal,  in  respect  thereof, 
and  any  such  proceeding  may  be  carried  on  as  if  this 

•  had  not  been  passed ;  or 

(<•)  Take  away  or  abridge  any  protection  or  benefit  in  relation 
to  any  such  action  or  proceeding. 

114.  The  registers  of  patents  and  of  proprietors  kept  under 
any  enactment  repealed  by  this  Act  shall  respectively  be  deemed 
parts  of  the  same  book  as  the  Register  of  Patents  kept  under  this 
Act. 

115.  All  general  rules  made  by  the  Lord  Chancellor  or  by 
any  other  authority  under  any  enactment  repealed  by  this  Act, 
and  in  force  at  the  commencement  of  this  Act,  may  at  any  time 
after  the  passing  of  this  Act  be  repealed,  altered,  or  amended 
by  the  Board  of  Trade,  as  if  they  had  been  made  by  the  Board 
under  this  Act,  but  so  that  no  such  repeal,  alteration,  or  amend- 
ment shall  take  effect  before  the  commencement  of  this  Act; 
and,  subject  as  aforesaid,  such  general  rules  shall,  so  far  as  they 
are  consistent  with  and  are  not  superseded  by  this  Act,  continue 
in  force  as  if  they  had  been  made  by  the  Board  of  Trade  under 
this  Act. 

116.  Nothing  in  this  Act  shall  take  away,  abridge,  or  preju- 


STATUTES:    46  AND  47  VICT.   C.  57  363 

dicially  affect  the  prerogative  of  the  Crown  in  relation  to  the 
granting  of  any  letters  patent  or  to  the  withholding  of  a  grant 
thereof. 

General  Definitions. 
117.  In  and  for  the  purposes  of  this  Act,  unless  the  context  General  de- 

,1  .  •  fruitions. 

otherwise  requires — • 

'  Person  '  includes  a  hody  corporate  ; 

'  The  Court '  means  (subject  to  the  provisions  for  Scotland, 
Ireland,  and  the  Isle  of  Man)  her  Majesty's  High  Court  of  Justice 
in  England ; 

'Law  officer'  means  her  Majesty's  Attorney- General  or 
Solicitor- General  for  England ; 

'  The  Treasury  '  means  the  Commissioners  of  her  Majesty's 
Treasury ; 

'  Comptroller '  means  the  Comptroller-General  of  Patents, 
Designs,  and  Trade  Marks  ; 

'  Prescribed '  means  prescribed  by  any  of  the  schedules  to 
this  Act,  or  by  general  rules  under  or  within  the  meaning  of  this 
Act; 

'  British  Possession  '  means  any  territory  or  place  situate 
within  her  Majesty's  dominions,  and  not  being  or  forming  part 
of  the  United  Kingdom,  or  of  the  Channel  Islands,  or  of  the  Isle 
of  Man,  and  all  territories  and  places  under  one  Legislature,  as 
hereinafter  denned,  are  deemed  to  be  one  British  Possession  for 
the  purposes  of  this  Act ; 

'  Legislature '  includes  any  person  or  persons  who  exercise 
legislative  authority  in  the  British  Possessions  ;  and  where  there 
are  local  Legislatures,  as  well  as  a  central  Legislature,  means 
the  central  Legislature  only. 

In  the  application  of  this  Act  to  Ireland,  '  summary  convic- 
tion '  means  a  conviction  under  the  Summary  Jurisdiction  Acts, 
that  is  to  say,  with  reference  to  the  Dublin  Metropolitan  Police 
District,  the  Acts  regulating  the  duties  of  justices  of  the  peace 
and  of  the  police  for  such  district,  and  elsewhere  in  Ireland 
the  Petty  Sessions  (Ireland)  Act,  1851,  and  any  Act  amend- 
ing it. 


STATUTES:    40   AND   47    V 


-     TO    I:  1888. 


TH: 

or  APPLICATI 


••otto  i.  ;    the  Forms  A,  15,  and  C  the  Patents  Rules  have  substi- 

tuted the  Forms  A,  Al,  A2,  B  and  C  (sc  7  . 

totton  II  Form  D. 

'>nt. 

YICTOKIA,  by  tin-  ^ace  of  God,  of  the  I'nited   Kingdom  ..f  Great 

in  and    Ireland,  Queen,  Defender  of  the  Faith:  To  nil  to 
those  presents  shall  come  greeting  : 

Whereas  John   Smith,  of  %2'.»    1'crry  Str«  .<jhntn.  in  the 

county  of  IJ'iririVA-,  Engineer,  hath  by  his  solemn  declaration  repre- 
1  unto  its  that  he  is  in  possession  of  an  invention  for  '  Improve- 
ments in  Sciriny  Machinet,'  that  he  is  the  true  and  first  inventor 
thereof.  and  that  the  same  is  not  in  use  by  any  other  person  to  the  best 
of  his  knowledge  and  belief: 

And  whereas  the  said  inventor  hath  humbly  prayed  that  wo  would 

be  graciously  plea-ed  to  grant  unto  him  (hen-inaiter  together  with  his 

itors,  administrators,  and  assigns,  or  any  of  them,  referred  to  as 

the  said  patentee)  our  Royal  Letters  Patent  for  the  sole  use  and  advan- 

tage of  his  said  invention  : 

And  whereas  the  Raid  inventor  hath  by  and  in  his  complete  Pi- 
cation  particularly  described  the  nature  of  his  invention  : 

And  whereas  we  being  willing  to  enconnige  all  in\  •  iiich 

may  be  for  the  public  good,  are  graciously  pleased  to  condescend  to  his 
request  : 

Know  ye,  therefore,  that  We,  of  our  especial  grace,  certain  know- 
ledge. and  mere  motion,  do  by  these  presents,  for  ns.  our  heirs  and 
successors,  give  and  grant  unto  the  said  patentee  our  special  licence, 
full  power,  sole  privilege,  and  authority,  that  the  said  patentee  by  him- 
self, his  agents,  or  licensees,  and  no  others,  may  at  all  times  hereafter 
during  the  term  of  years  herein  mentioned,  make,  use,  exercise,  and 
vend  the  said  invention  within  our  Tinted  Kingdom  of  Great  Britain 
and  Ireland,  and  Isle  of  Man.  in  such  manner  as  to  him  or  them  may 
seem  meet,  and  that  die  said  patentee  shall  have  and  enjoy  the  whole 
profit  and  advantage  from  time  to  time  accruing  by  reason  of  the  said 
invention,  during  the  term  of  fourteen  years  from  the  date  hereunder 
written  of  these  presents  :  And  to  the  end  that  the  said  patentee  may 
have  and  enjoy  the  sole  use  and  exercise  and  the  full  benefit  of  the  said 
invention,  We  do  by  these  presents  for  us,  our  heirs  and  successors, 
strictly  command  all  our  subjects  whatsoever  within  our  United  King- 


STATUTES:    46  AND   47   VICT.   C.   57  365 

dom  of  Great  Britain  and  Ireland,  and  the  Isle  of  Man,  that  they  do 
not  at  any  time  during  the  continuance  of  the  said  term  of  fourteen 
years  either  directly  or  indirectly  make  use  of  or  put  in  practice  the 
said  invention,  or  any  part  of  the  same,  nor  in  anywise  imitate  the  same, 
nor  make  or  cause  to  be  made  any  addition  thereto  or  subtraction  there- 
from, whereby  to  pretend  themselves  the  inventors  thereof,  without  the 
consent,  licence,  or  agreement  of  the  said  patentee  in  writing  under  his 
hand  and  seal,  on  pain  of  incurring  such  penalties  as  may  be  jiistly 
inflicted  on  such  offenders  for  their  contempt  of  this  our  l\oyal  command, 
and  of  being  answerable  to  the  patentee  according  to  law  for  his 
damages  thereby  occasioned :  Provided  that  these  our  letters  patent 
are  on  this  condition,  that,  if  at  any  time  during  the  said  term  it  be 
made  to  appear  to  us,  our  heirs  or  successors,  or  any  six  or  more  of  our 
Privy  Council,  that  this  our  grant  is  contrary  to  law,  or  prejudicial  or 
inconvenient  to  our  subjects  in  general,  or  that  the  said  invention  is  not 
a  new  invention  as  to  the  public  use  and  exercise  thereof  within  our 
United  Kingdom  of  Great  Britain  and  Ireland,  and  Isle  of  Man,  or  that 
the  said  patentee  is  not  the  first  and  true  inventor  thereof  within  this 
realm  as  aforesaid,  these  our  letters  patent  shall  forthwith  determine, 
and  be  void  to  all  intents  and  purposes,  notwithstanding  anything  here- 
inbefore contained :  Provided  also,  that  if  the  said  patentee  shall  not 
pay  all  fees  by  law  required  to  be  paid  in  respect  of  the  grant  of  these 
letters  patent,  or  in  respect  of  any  matter  relating  thereto  at  the  time 
or  times,  and  in  manner  for  the  time  being  by  law  provided ;  and  also 
if  the  said  patentee  shall  not  supply  or  cause  to  be  supplied,  for  our  service 
all  such  articles  of  the  said  invention  as  may  be  required  by  the  officers 
or  commissioners  administering  any  department  of  our  service  in  such 
manner,  at  such  times,  and  at  and  upon  such  reasonable  prices  and  tenns 
as  shall  be  settled  in  manner  for  the  time  being  by  law  provided,  then, 
and  in  any  of  the  said  cases,  these  our  letters  patent,  and  all  privileges 
and  advantages  whatever  hereby  granted  shall  determine  and  become 
void  notwithstanding  anything  hereinbefore  contained  :  Provided  also 
that  nothing  herein  contained  shall  prevent  the  granting  of  licences  in 
such  manner  and  for  such  considerations  as  they  may  by  law  be  granted  : 
And  lastly,  we  do  by  these  presents  for  us,  our  heirs  and  successors, 
grant  unto  the  said  patentee  that  these  our  letters  patent  shall  be  con- 
strued in  the  most  beneficial  sense  for  the  advantage  of  the  said  patentee. 
In  witness  whereof  we  have  caused  these  our  letters  to  be  made  patent 
this  one  thousand  eight  hundred  and 

and  to  be  sealed  as  of  the  one  thousand  eight 

hundred  and 


166 


8TATITE9:    46  AM'   <7    VKT    C.  47 


S*«tk«>i. 

Feet. 

tliis  scluduh-  ti.  Schedule  to  the  Patents  Rules 

K)  has  been  substituted.     (See  p.  801.) 


•Mlta  111.  Ill):   THIRD   SCI! 

Enactment*  licpeu 

The  Statute  of  Monopolies. 
In  part;  namely — 
Sections  ten,  eleven,  and  twch «•. 

The  Statutory  Declarations  Act,  1885. 
In  part ;  namely — 
>n  eleven. 

Will.  IV.  c.  s:;.       An  Act  to  amend  the  law  touching  letters 


_'  1  James  I.  c.  8. 
[1628.] 

Will.  IV. 
[1885.] 

In  part. 


[1885.] 

Viet.  c.  67. 
1889, 


7  Jc  8  Viet.  c.  69.  (a) 

[1844.] 
In  part. 


patent  f«>r  inventions. 

An  Act  to  amend  an  Act  of  the  fifth  and 
sixth  years  of  the  reign  uf  King  William 
the  Fourth,  intituled  '  An  Act  to  amend 
the  law  touching  letters  patent  fur  inven- 
tions.' 

An  Act  for  amending  an  Act  passed  in  the 
fourth  year  of  the  reign  of  his  late  Majesty, 
intituled  '  An  Act  for  the  better  adminis- 
tration df  justice  in  his  Majesty  -  I'rhv 
Council,  and  to  extend  its  jurisdiction  and 
powers.' 

In  part ;  namely — 

Sections  two  to  five,  both  included. 


15  &  1C  Viet.  c.  88. 

[1852.] 

16  4  17  Viet.  c.  5. 

[181 


The  Patent  Law  Amendment  At  t. 

An  Act  to  substitute  stamp  duties  for  fees  on 
passing  letters  patent  for  inventions,  and 
to  provide  for  the  purchase  for  the  public 
use  of  certain  indexes  of  specifications. 


(a)  NOTE.— Sections  six  and  seven  of  this  Act  are  repealed  by  the  Statute 
Law  Revision  (No.  2)  Act.  1874. 


STATUTES:    46  AND  47  VICT.    C.   57 


367 


16  &  17  Viet.  c.  115. 

[1853.] 


22  Viet.  c.  13. 

[1859.] 


28  &  29  Viet.  c.  3. 

[1865.] 

33  &  34  Viet.  c.  27. 
[1870.J 

43  &  44  Viet.  c.  10. 
[1880.] 


An  Act  to  amend  certain  provisions  of  the 
Patent  Law  Amendment  Act,  1852,  in 
respect  of  the  transmission  of  certified 
copies  of  letters  patent  and  specifications 
to  certain  offices  in  Edinburgh  and  Dublin, 
and  otherwise  to  amend  the  said  Act. 


An  Act  to  amend  the  law  concerning  patents 
for  inventions  with  respect  to  inventions 
for  improvements  in  instruments  and 
munitions  of  war. 

The  Industrial  Exhibitions  Act,  1865. 
The  Protection  of  Inventions  Act,  1870. 


The  Great  Seal  Act,  1880. 
In  part ;  namely — 
Section  five. 


PATENTS  ACT,   1885. 
[48  AND  49  VICT.  CH.  63.] 

An  Act  to  amend  the  Patents,  Designs,  and  Trade  Marks 
Act,  1883. 


A.D.  1885. 


BE  it  enacted  by,  &c.,  as  follows  : — 

1.  This  Act  shall  be  construed  as   one   with  the  Patents,    construc- 
Designs,  and  Trade  Marks  Act,  1883  (in  this  Act  referred  to  as   luJ^utie. 
the  principal  Act). 

This  Act  may  be  cited  as  the  Patents,  Designs,  and  Trade 
Marks  (Amendment)  Act,  1885,  and  this  Act  and  the  principal 
Act  may  be  cited  together  as  the  Patents,  Designs,  and  Trade 
Marks  Acts,  1883  and  1885. 

2.  Whereas  subsection  two  of  section  five  of  the  principal  Amendment 
Act   requires  a   declaration  to  be  made  by  an  applicant  for  a  &  47  Viet.*5 
patent  to  the  effect  in  that  subsection  mentioned,  and  doubts  c-  57> 
have   arisen  as   to   the  nature  of  that   declaration,  and  it  is 
expedient    to  remove  such  doubts :    Be  it  therefore    enacted 

that :— 


168 


13:  48  AN  «  .  61 


»  4  6  \V.  4. 

c.  ej. 


«•«  M.  8,  ».  * 

II  of  44*47 


cfpccuica- 

•te, 
not  to  be 

I    .'.I:-''.! 

m  - 


Power  to 

KT»nt 

\   •••••-• 


juiutly. 


Amendment 


Tin  declaration  n.-  I  section  two  of  section  five  of 

:inri|>al  A» -t  ma\  !><•  eith.r  a  statutory  declaration  under  tho 
i orations  Art,  1H85,  or  not,  as  may  be  from  time 
to  time  prescribed. 

8.  Whereas  under  the  principal  A  plete  specification 

is  required  (by  section  l>c  left  within  nii  •  and 

(by  section  nine)  to  be  accepted  \\ul.in  tv.  from  the 

date  of  application,  and  a  patent  i*  i  by  section  t 

to  be  sealed  within  fifteen  month-  from  the  date  of  applic 
and  it  is  expedient  to  empower  tin-  Comptroller  to  . 
certain  cases  the  said  times:    IV  it  therefore  enacted  as  fol- 
lows : — 

A  complete  specification  may  i  1  accepted  within 

extended  times,   not  exceeding  one  month  and   three  months 
respectively,  after  the  said  nine  and  twelve  months  r« 
as  the  Comptroller  may.  on  payment  of  the  prescribed  fee,  allow, 
and  where  siu-h   extension  of  time  has  been  allowed 
extension  of  four  months  after  the  -aid  fiftem  months  si.:. 
allowed  for  the  sealing  of  the  patent ;  and  the  principal  Act  shall 
have  effect  as  if  any  time  so  allowed  were  added  to  the  said 
periods  specified  in  the  principal  Act. 

4.  \Vhere  an  application  lor  a  patent  has  Ixcn  abandoned,  or 
become  void,  the  specification  or  specifications  and  dra 

any.  accompanying  or  left  in  connection  with  such  applies 
shall  not  at  any  time  he  open  to  public  inspection  or  be  publ 
by  the  Comptroller. 

5.  Whereas  doubts  have  arisen  whether  under  the  principal 
Act  a  patent  may  lawfully  be  granted  to  several  persons  jointly, 
some  or  one  of  whom  only  an   or  is  the  true  and  first  inventors 
or  inventor :  Be  it  therefore  enacted  and  declared  that  it  lias 
been  and  is  lawful  under   the  principal   Act  to  grant  such  a 
patent. 

G.  In  subsection  one  of  section  one  hundred  and  three  of  the 
principal  Act,  the  words  '  date  of  the  application  '  shall  be  sub- 
stituted for  the  words  '  date  of  the  protection  obtained.' 


STATUTES:   49   AND   50  VICT.   C.  37 


369 


PATENTS  ACT,   1886. 
[49  AND  50  VICT.  c.  87.] 

An  Act  to  remove  certain  doubts  respecting  the  construction 
of  the  Patents,  Designs,  and  Trade  Marks  Act,  1883,  so  far  as 
respects  the  drawings  by  which  specifications  are  required  to  be 
accompanied,  and  as  respects  exhibitions. 

Whereas  by  section  five  of  the  Patents,  Designs,  and  Trade 
Marks  Act,  1883,  specifications,  whether  provisional  or  com- 
plete, must  be  accompanied  by  drawings  if  required,  and  doubts 
have  arisen  as  to  whether  it  is  sufficient  that  a  complete  speci- 
fication refers  to  the  drawings  by  which  the  provisional  speci- 
fication was  accompanied,  and  it  is  expedient  to  remove  such 
doubts  :- — 

Be  it  therefore  enacted  by,  &c.,  as  follows: — 

1.  This  Act  may  be  cited  as  the  Patents  Act,   1886,  and 
shall  be  construed  as  one  with  the  Patents,  Designs,  and  Trade 
Marks  Acts,  1883  and  1885,  and,  together  with  those  Acts,  may 
be  cited  as  the  Patents,  Designs,  and  Trade  Marks  Acts,  1883  to 
1886. 

2.  The  requirement  of  subsection  four  of  section  five  of  the 
Patents,  Designs,  and  Trade  Marks  Act,  1883,  as  to  drawings 
shall  not  be  deemed  to  be  insufficiently  complied  with  by  reason 
only  that  instead  of  being  accompanied  by  drawings  the  complete 
specification  refers  to   the   drawings    which    accompanied  the 
provisional  specification.     And  no  patent  heretofore  sealed  shall 
be  invalid  by  reason  only  that  the  complete  specification  was 
not   accompanied    by  drawings,   but    referred  to   those  which 
accompanied  the  provisional  specification. 

3.  Whereas  by  section  thirty-nine  of  the  Patents,  Designs, 
and  Trade  Marks  Act,  1883,  as  respects  patents,  and  by  section 
fifty-seven  of  the  same  Act  as  respects  designs,  provision  is  made 
that  the  exhibition  of  an  invention  or  design  at  an  industrial  or 
international  exhibition,  certified  as  such  by  the  Board  of  Trade, 
shall  not  prejudice   the   rights   of  the  inventor  or  proprietor 
thereof,  subject  to   the  conditions   therein  mentioned,   one  of 
which  is  that  the  exhibitor  must,  before  exhibiting  the  invention, 
design,  or  article,  or  publishing  a  description  of  the  design,  give 
the   Comptroller  the  prescribed  notice   of  his  intention  to  do 
so  : — 

And  whereas  it  is  expedient  to  provide  for   the  extension 

£  B 


46  &  47  Yict. 
c.  67. 


Short  title; 

and  con 

struction  46 

&  47  Viet.  c. 

57. 

48  A-  49  Viet. 

c.  63. 


The  same 
drawings 
may  accom- 
pany both 
specifica- 
tion*. 


Protection 
of  patents 
and  desifrn.s 
exhibited  at 
interna- 
tional 
exhibitions. 


370  STATTTIX:   49  AND  .V)  VICT.  C.  »7 

of  the  said  sections  to  industrial  and  mt.  i  national  exhibitions 
hild  out  of  tin  t'iiit..i  Kingdom:  Ik-  it  therefore  enacted  as 
follows : — 

It  shall  be  lawful  for  her  Majesty,  by  Order  in  C<>nn< -il.  from 
to  time  to  declare  that  sections  thirty-nine  and  fifty-seven 
of  the  Patents,  Designs,  and  Trade  Marks  Act.  1888,  or  either  of 
those  sections,  shall  apply  to  any  exhibition  mentioned  in 
the  Order  in  like  manner  as  if  it  were  an  industrial  or  inter- 
national inhibition  certified  l>y  tin-  Hoard  of  Trade,  and  to  pro- 
u<l.  that  tln>  exhibitor  shall  be  relieved  from  the  conditions, 

:ied  in  the  said  sections,  of  giving  notice  to  the  Compti 
of  his  intention  to  exhibit,  and  shall  be  so  rel.  her  abso- 

lutely or  upon  such  terms  and  conditions  as  to  her  Majest 
Council  may  seem  fit. 


PATKXTS  ACT,   1888. 
.'.1  &  r>2  VICT.  CH.  50.] 

*  n.  i8«.  An  Act  to  amend  the  Patents,  Designs,  and  Trade  Mark* 

Act,  188f , 

Whereas  it  is  expedient  to  amend  the  Patents,  Designs,  and 
4«*  47  via.  Trade  Marks  Act,  IHNH,  hereinafter  referred  to  as  the  principal 

r.  47.  »     . 

it  therefore  enacted,  Ac.,  as  follows  :— 

K •-••-      :  1.  (1)  After  the  first  day  of  July  one  thousand  eight  hun- 

;,  '_  dred  and  eighty-nine  a  person  shall  not  be  entitled  to  describe 

himself  as  a  patent  agent,  whether  by  advertisement,  by  de- 
-« ription  on  his  place  of  business,  by  any  document  issued  by 
him,  or  otherwise,  unless  he  is  registered  as  a  patent  agent  in 
pursuance  of  this  Art. 

(2)  The  Board  of  Trade  shall,  as  soon  as  may  be  after  the 
passing  of  this  Act,  and  may  from  time  to  time,  make  such 
general  rules  as  are  in  the  opinion  of  the  Board  required  for 
giving  effect  to  this  section,  and  the  provisions  of  section  one 
hundred  and  one  of  the  principal  Act  shall  apply  to  all  rules  so 
made  as  if  they  were  made  in  pursuance  of  that  section. 

(8)  Provided  that  every  person  who  proves  to  the  satisfaction 
of  the  Board  of  Trade  that  prior  to  the  passing  of  this  Act  he 
had  been  bond  fide  practising  as  a  patent  agent  shall  be  en- 
titled to  be  registered  as  a  patent  agent  in  pursuance  of  this  Act. 


STATUTES:   51    AND   52   VICT.    C.   50  371 

(4)  If  any  person  knowingly  describes   himself  as  a  patent 
agent  in  contravention  of  this  section  he  shall  be  liable  on  sum- 
mary conviction  to  a  fine  not  exceeding  twenty  pounds. 

(5)  In   this   section   '  patent   agent  '  means   exclusively  an 
agent  for  obtaining  patents  in  the  United  Kingdom. 

2.  For  section  seven  of  the  principal  Act  the  following  section  Amend- 
shall  be  substituted,  namely  :—  ST;  TO*  c. 


'  7.  (1)  If  the  Examiner  reports  that  the  nature  of  the  inven-  57- 

s  7  &s  to 

tion  is  not  fairly  described,  or  that  the  application,  specification,  applications. 
or  drawings  has  not,  or  have  not,  been  prepared  in  the  prescribed 
manner,  or  that  the  title  does  not  sufficiently  indicate  the  subject- 
matter  of  invention,  the  Comptroller  may  refuse  to  accept  the 
application,  or  require  that  the  application,  specification,  or 
drawings  be  amended  before  he  proceeds  with  the  application  ; 
and  in  the  latter  case  the  application  shall,  if  the  Comptroller  so 
directs,  bear  date  as  from  the  time  when  the  requirement  is 
complied  with. 

'  (2)  Where  the  Comptroller  refuses  to  accept  an  application 
or  requires  an  amendment,  the  applicant  may  appeal  from  his 
decision  to  the  law  officer. 

'  (3)  The  law  officer  shall,  if  required,  hear  the  applicant  and 
the  Comptroller,  and  may  make  an  order  determining  whether, 
and  subject  to  what  conditions,  if  any,  the  application  shall  be 
accepted. 

'  (4)  The  Comptroller  shall,  when  an  application  has  been 
accepted,  give  notice  thereof  to  the  applicant. 

'  (5)  If,  after  an  application  for  a  patent  has  been  made,  but 
before  the  patent  thereon  has  been  sealed,  another  application 
for  a  patent  is  made,  accompanied  by  a  specification  bearing  the 
same  or  a  similar  title,  the  Comptroller,  if  he  thinks  fit,  on  the 
request  of  the  second  applicant,  or  of  his  legal  representative, 
may,  within  two  months  of  the  grant  of  a  patent  on  the  first 
application  either  decline  to  proceed  with  the  second  application 
or  allow  the  surrender  of  the  patent,  if  any,  granted  thereon.' 

3.  In  subsection  five  of  section  nine  of  the  principal  Act  the  s.  9,  as  to 
words  '  other  than  an  appeal  to  the  law  officer  under  this  Act  '  reports  of 

,     ,,  ,  .,,    j  examiners. 

shall  be  omitted. 

4.  In  subsection  one  of  section  eleven  of  the  principal  Act   s.n,  as  to 
the  words  from  '  or  on  the  ground  of  an  examiner  '  to  '  a  previous  SninTof0a 
application,'  both  inclusive,  shall  be  omitted,  and  there  shall  be  pat< 
added  in  lieu  thereof  the  following  words,  namely,  '  or  on  the 
ground  that  the  complete  specification   describes  or  claims  an 
"invention  other  than  that  described  in  the  provisional  specifica- 

II   B   2 


ND  52   VICT.  C.  M 


ft.  U,  M  I. 

•  i 
v    •    ' 

tton*. 


-i 


rrrtiflrath-ii 


tion,  and  that  such  other  invention  forms   •  f  an 

application  made  by  the  opponent  in  the  interval  between  the 
ng  of  the  provisional  specification  and  tin    I*  iving  of  the 
complete  specification.' 

5.  For  subsection  ten  of  section  eighteen  of  th<  principal  Act 
tin-  following  subsection  shall  be  substituted,  namely : — 

'  (10)  The  foregoing  provisions  of  this  section  do  not  at 
\\l.'ii  and  so  long  as  any  action  for  infringement  or  proceeding 
for  revocation  of  a  patent  is  pending.' 

[Sections  0  to  20  relate  to  Designs  and  Trade  Marks.] 

•Jl.  In  section  eighty-seven  of  the  principal  Act,  after  the 
words  '  subject  to,'  shall  be  added  the  words  *  the  provisions  of 
this  Act  and  to.' 

-•2.  In  section  eighty  <  i-Jit  of  the  principal  Act,  after  the 
words  •  subject  to,'  shall  be  added  the  words  '  the  provisions  of 
this  Act  and  to.' 

ion  ninety  of  the  principal  Act.  after  the  words 
'  of  the  name  of  any  person,'  shall  be  added  the  words  '  or  of  any 
other  particulars.' 

[Section  24  relates  to  Designs  and  Trade  Marks.] 

>,  After  section  one  hundred  and  two  of  the  principal 

Trade.          the  following  section  shall  be  added,  and  numbered  102A  ;  nn 

•(1)  All  things  required  or  authorised  under  tin's  Act  to  be 
done  by,  to,  or  before  the  Board  of  Trade  may  be  done  by,  to,  or 
before  the  President  or  a  secretary  or  an  assistant-secretary  of 
the  Board. 

2)  All  documents  purporting  to  be  orders  made  by  the 
Board  of  Trade  and  to  be  sealed  with  the  seal  of  the  Board,  or  to 
l»y  signed  by  a  secretary  or  assistant-secretary  of  the  Board,  or  by 
any  person  authorised  in  that  behalf  by  the  President  of  the 
Board,  shall  be  received  in  evidence,  and  shall  be  deemed  to  be 
such  orders  without  further  proof,  unless  the  contrary  is  shown. 

4  (8)  A  certificate,  signed  by  the  President  of  the  Board  of 
Trade,  that  any  order  made  or  act  done  is  the  order  or  act  of  the 
Board,  shall  be  conclusive  evidence  of  the  fact  so  certified.' 

[Section  2G  relates  to  Trade  Marks.] 

;ti.  n  27.  The  principal  Act  shall,  as  from  the  commencement  ot 
this  Act,  take  effect  subject  to  the  additions,  omissions,  and  sub- 
stitutions required  by  this  Act ;  but  nothing  in  this  Act  shall 
affect  the  validity  of  any  act  done,  right  acquired,  or  liability 
incurred  before  the  commencement  of  this  Act. 


STATUTES:   61   AND  52  VICT.   C.  50  373 

28.  This  Act  shall,  except  so  far  as  is  by  this  Act  otherwise  commence- 

•11  -J    J  j  •    i  x-  ii        meutofAct. 

specially  provided,  commence  and  come  into  operation  on  the 
first  day  of  January  one  thousand  eight  hundred  and  eighty- 
nine. 

29.  This   Act   may  be   cited  as   the  Patents,  Designs,  and  .short  title. 
Trade  Marks  Act,  1888,  and  this  Act  and  the  Patents,  Designs, 

and  Trade  Marks  Acts,  1883  to  1886,  may  be  cited  collectively 
as  the  Patents,  Designs,  and  Trade  Marks  Acts,  1883  to  1888. 


INTERNATIONAL   CONVENTION  AND  PROTOCOL. 

ARTICLE  I. 

The  Governments  of  Belgium,  Brazil,  Spain,  France,  Guate- 
mala, Italy,  Holland,  Portugal,  Salvador,  Servia,  and  Switzer- 
land constitute  themselves  into  a  Union  for  the  protection  of 
industrial  property.1 

AETICLE  II. 

The  subjects  or  citizens  of  each  of  the  contracting  states  shall, 
in  all  other  states  of  the  Union,  as  regards  patents  .  .  .  enjoy 
the  advantages  that  their  respective  laws  now  grant,  or  shall 
hereafter  grant,  to  their  own  subjects  or  citizens. 

Consequently,  they  shall  have  the  same  protection  as  the 
latter,  and  the  same  legal  recourse  on  any  infringement  of  their 
rights,  provided  they  observe  the  formalities  and  conditions  im- 
posed on  subjects  or  citizens  by  the  internal  legislation  of  each 
state.2 

ARTICLE  III. 

Subjects  or  citizens  of  states  not  forming  part  of  the  Union, 
who  are  domiciled  or  have  industrial  or  commercial  establish- 
ments on  the  territory  of  any  of  the  states  of  the  Union,  shall 
be  assimilated  to  the  subjects  or  citizens  of  the  contracting 
states. 

ARTICLE  IV. 

Any  person  who  has  duly  registered  an  application  for  a 
patent  ...  in  one  of  the  contracting  states  shall  enjoy,  as 

1  Vide  paragraph  1  of  Protocol. 

2  Vide  paragraph  3  of  Protocol. 


:i7 1  IN  n  i;v\  i  I»N  M.  <»\\  j  \ 

regards  registration  in  the  other  states,  and  reserving  the  rights 
of  third  parties,  a  ri-ht  of  |>ii  .rr  ••reinafter 

stated. 

Consequently,  subsequent  registration  in  any  of  the  other 
states  of  the  Union  before  expiry  of  them  periods  shall  not  be 
invalidated  through  any  acts  accomplished  in  tin-  interval,  eitln -r. 
for  instance,  by  registration,  by  publication  of  the  iim-ntion,  or 
tin  working  of  it  by  a  third  partv  . 

The  above-mentioned  terms  of  priority  shall  be  six  months 
for  patents  and  three  months  for  designs,  models,  and  trade- 
marks. A  month  longer  is  allowed  for  countries  beyond 


?. 

The  introduction  l>\  the  patentee  into  the  country  where  tin- 
patent  has  been  granted  of  objects  manufactured  in  any  of  tin 
states  of  the  Union  shall  not  entail  forfeiture. 

Nevertheless,  the  patentee  shall  remain  bound  to  work 
(exploiter)  his  patent  in  conformity  with  the  laws  of  the  country 
into  which  he  introduces  the  patented  objects  (ou  il  introduit  let 
objets  brevetes). 

[Articles  VI.  X.  relate  exclusively  to  Designs  and  Trade 
Marks.] 

ARTICLE  X I . 

The  high  contracting  parties  agree  to  grant  temporary  pro- 
tection to  pateutable  inventions,  ...  for  articles  appearing  at 
official  or  officially  recognised  International  Exhibitions. 

Aimn.r.  XII. 

Each  of  the  high  contracting  parties  agrees  to  establish  a 
special  government  depart  im-nt  for  industrial  property,  and  a 
central  office  for  communication  to  the  public  of  patents.  .  .  . 

ARTICLE  Xin. 

An  international  office  shall  be  organised  under  the  name  of 
•  Bureau  International  de  1' Union  pour  la  Protection  de  la  Pro- 
pri6t£  Industrielle.'  (International  Office  of  the  Union  for  the 
Protection  of  Industrial  Property.) 

This  office,  the  expense  of  which  shall  be  defrayed  by  the 
Governments  of  all  the  contracting  states,  shall  be  placed  under 
the  high  authority  of  the  Central  Administration  of  the  > 
Confederation,  and  shall  work  under  its  supervision.  Its  func- 
tions shall  be  determined  by  agreement  between  the  states  of  the 
Union. 


INTERNATIONAL  CONVENTION  375 

AETICLE  XIV. 

The  present  Convention  shall  be  submitted  to  periodical 
revisions,  with  a  view  to  introducing  improvements  calculated  to 
perfect  the  system  of  the  Union. 

To  this  end  conferences  shall  be  successively  held  in  each  of 
the  contracting  states  by  delegates  of  the  said  states.  The  next 
meeting  shall  take  place,  in  1885,  at  Borne. 

ARTICLE  XV. 

It  is  agreed  that  the  high  contracting  parties  respectively 
reserve  to  themselves  the  right  to  make  separately,  as  between 
themselves,  special  arrangements  for  the  protection  of  industrial 
property,  in  so  far  as  such  arrangements  do  not  contravene  the 
provisions  of  the  present  Convention. 

ARTICLE  XVI. 

States  which  have  not  taken  part  in  the  present  Convention 
shall  be  permitted  to  adhere  t6  it  at  their  request. 

This  adhesion  shall  be  notified  diplomatically  to  the  Govern- 
ment of  the  Swiss  Confederation,  and  by  the  latter  to  all  the 
others.  It  shall  imply,  de  jure,  accession  to  all  the  clauses,  and 
admission  to  all  the  advantages  stipulated  by  the  present  Con- 
vention. 

ARTICLE  XVII. 

The  carrying  out  of  the  reciprocal  engagements  contained  in 
the  present  Convention  is  subordinated,  in  so  far  as  necessary, 
to  the  observance  of  the  formalities  and  rules  established  by  the 
constitutional  laws  of  those  of  the  high  contracting  parties  who 
are  obliged  to  elicit  their  application,  which  they  engage  to  do  as 
early  as  possible. 

ARTICLE  XVIII. 

The  present  Convention  shall  come  into  operation  within  one 
month  after  exchange  of  ratifications,  and  shall  remain  in  force 
for  an  unlimited  time,  till  the  expiry  of  one  year  from  the  date 
of  its  denunciation.  This  denunciation  shall  be  addressed  to 
the  Government  commissioned  to  receive  adhesions.  It  shall 
only  affect  the  state  which  shall  have  denounced  the  Convention 
— the  Convention  remaining  intact  for  the  other  contracting 
parties. 

ARTICLE  XIX. 

The  present  Convention  shall  be  ratified,  and  the  ratifications 
of  it  exchanged  in  Paris,  within  one  year  at  the  latest. 


376  HOCOL 

In  witness  whereof  the  respective   Plenipotentiaries   hav» 
signed  it,  and  thereto  affixed  their  seals. 

I  h.  1888. 


The  pi-  of  tli'  i<;  states,  when  sign- 

ing the  accompanying  ( 'onvention.  at  tin-  same  time  signed 
an  explanatory  Protocol,  the  substance  of  which  is  as  follows  : — 

1.  The  word  rial  property  'are  to  be  understood  in  tli.ir 

broadest  sense  ;  tl  •  t  to  apply  simply  to  industrial  pio- 

-  properly  so  called,  but  also  to  agricultural  products  (wines, 
corn,  fruits,  cattle,  dr.).  and  to  mineral  products  employed  in 
commerce  (mineral  waters,  . 

•J.  Under  the  word  '  patents  '  are  comprised  the  various  kinds 
of  industrial  patents  recognised  by  the  legislation  of  the  contract- 
ing states,  such  as  improvement  patents,  etc. 

3.  The  last  paragraph  of  Article  II.  does  not  affect  the  legis- 
lation of  the  contracting  states,  relating  to  legal  procedure,  juris- 
diction, etc. 

4.  Paragraph  1  of  Article  VI.  is  to  b«  understood  as  meaning 
that  no  trade-mark  shall  he  excluded  from   protection  in  any 
state  of  the  Union,  becar.se  it  does  not  satisfy,  in  regard  to  tin- 

-  composing  it,  the  conditions  of  the  legislation  of  that  state, 
provided  that  on  this  point  it  comply  with  the  legal  requirements 
of  the  country  of  origin,  and  that  it  had  been  properly  registered 
in  said  country  of  origin.     With  this  exception,  which  relates 
only  to  the  form  of  the  mark,  and  otherwise  reserving  the  clauses 
of  the  other  articles  of  the  Convention,  the  internal  legislation  of 
each  state  remains  in  force. 

To  avoid  misconstruction,  it  is  agreed  that  the  use  of  pub- 
lic armorial  bearings  and  decorations  may  be  taken  to  be  con- 
trary to  public  order  in  the  sense  of  last  paragraph  of  Article  \  I 

5.  Each  country  of  the  Union  shall  publish,  if  practicable,  an 
official  newspaper,  in  connection  with  the  special  government 
department  mentioned  in  Article  XII. 

C.  This  paragraph  relates  to  the  working  of  the  International 
( )ffice  at  Berne,  the  expense  of  which  is  to  be  divided  in  a  g 
proportion  amongst  the  several  states  forming  the  Union. 

7.  The  present  Protocol,  which  shall  be  ratified  along  with 
the  Convention,  shall  have  the  same  force,  validity,  and  duration 
as  the  Convention  itself. 


PATENTS  EULES,     1890  377 


PATENTS  EULES,  1890,  RELATING  TO  APPLICA- 
TIONS FOE  PATENTS  FOE  INVENTIONS  AND 
PEOCEEDINGS  THEEEON,  AND  EEGISTEATION 
OF  PATENTS,  WITH  LIST  OF  FEES. 

BY  virtue  of  the  provisions  of  the  Patents,  Designs,  and  Trade 
Marks  Acts,  1883  to  1888,  the  Board  of  Trade  do  hereby  make 
the  following  Rules : — 

Short  Title. 

1.  These  Eules  may  be  cited  as  the  Patents  Eules,  1890.          short  title. 

Commencement. 

2.  These  Rules  shall  come  into  operation  from  and  imme-  commence 
diately  after  the  31st  day  of  March  1890. 

Interpretation. 

3.  In  the  construction  of  these  Rules,  any  words  herein  used  J"0t,fTreta" 
defined  by  the  said  Act  shall  have  the  meanings  thereby  assigned 

to  them  respectively. 

Fees. 

4.  The  fees  to  be  paid  under  the  above-mentioned  Acts  shall  fees. 
be  those  specified  in  the  list  of  fees  in  the  First  Schedule  to  these 
Rules. 

Forms. 

5.  The  Forms  A,  B,  and  C  in  the  First  Schedule  to  the  Act  Forms, 
of  1883  shall  be  altered  or  amended  by  the  substitution  therefor  '* 

of  the  Forms  A,  Al,  A2,  B,  and  C  in  the  Second  Schedule  to 
these  Rules. 

6.  (1)  An  application  for  a  patent  containing  the  declaration  Application. 
mentioned  in  the  subsection  2  of  section  5  of  the  Act  of  1883, 

and  section  2  of  the  Act  of  1885  shall  be  made  either  in  the 
Form  A  or  the  Form  Al,  or  the  Form  A2,  set  forth  in  the  Second 
Schedule  to  these  Rules  as  the  case  may  be. 

(2)  The  Form  B  in  such  Schedule  of  provisional  specification  specifica- 
tion. 


PATENTS  RULES,  IWO 


otter  famt 


I' 


SIM,  «t<-.,  of 


•rarcbeof 
°~ 


Form  C  of  complete  specification  shall  respectively  be 
used. 

(8)  The  remaining  forms  other  than  A,  Al,  A2,  B,  and  C, 

nli  in  the  Second  Schedule  to  these  Bales,  may,  as  far  as 

they  are  applicable,  be  used  in  any  proceedings  under  these  Rules. 

General. 

7.  The  Patent  Office  shall  be  open  to  the  public  every  week- 
day between  the  hour-  of  U-n  and  four,  except  »n  the  days  and 
times  following:— 

Christmas  day. 

Good  Friday. 

The  day  observed  as  her  Majesty's  birthday. 

days  observed  as  days  of  public  fast  or  thanks- 
giving. or  as  holidays  at  the  Bank  of  England. 

8.  An  application  for  a  patent  must  be  signed  by  the  appli- 
cant, but  all  other  communications  between  the  applicant  and 
the  Comptroller,  and  all  attendances  by  the  applicant  upon  the 
Comptroller,  may  be  made  by  or  through  an  agent  duly  authorised 
to  the  satisfaction  of  the  Comptroller,  and  if  he  so  require,  resi- 
dent in  the  United  Kingdom. 

9.  The  application  shall  be  accompanied  by  a  statement  of 
an  address  to  which  all  notices,  requisitions,  and  communications 
of  every  kind  may  be  made  by  the  Comptroller  or  by  the  Board 
of  Trade,  and  such  statement  shall  thereafter  be  binding  upon 
the  applicant  unless  and  until  a  substituted  statement  of  address 
shall  be  furnished  by  him  to  the  Comptroller.     He  may  in  any 
particular  case  require  that  the  address  mentioned  in  this  rule 
be  in  tin-  Tinted  Kingdom. 

10.  All  documents  and  copies  of  documents  except  Statutory 
Declarations  and  affidavits  sent  to  or  left  at  the  Patent  Office  or 
otherwise  furnished  to  the  Comptroller  or  to  the  Board  of  Trade 
shall  be  written  or  printed  in  large  and  legible  characters  and, 
unless  otherwise  directed,  in  the  English  language,  upon  strong 
wide  ruled  paper  (on  one  side  only),  of  a  size  of  13  inches  by  8 
inches,   leaving  a   margin    of  2   inches  on  the  left-hand  part 
thereof,  and  the  signature  of  the  applicants  or  agents  thereto 
must  be  written  in  a  large  and  legible  hand.     Duplicate  docu- 
ments shall  at  any  time  be  left,  if  required  by  the  Comptroller. 

11.  Before  exercising  any  discretionary  power  given  to  the 
Comptroller  by  the  said  Acts,  adversely  to  the  applicant  for  a 
patent  or  for  amendment  of  a  specification,  the  Comptroller 
shall  give  ten  days'  notice,  or  such  longer  notice  as  he  may 


PATENTS  RULES,    1£93  379 

think  fit,  to  the  applicant  of  the  time  when  he  may  be  heard  xoticc  of 
personally  or  by  his  agent  before  the  Comptroller.     Statutory  hcaring- 
declarations  and  affidavits  shall  be  in  the  form  for  the  time  being 
in  use  in  the  High  Court  of  Justice. 

12.  Within  five  days  from  the  date  when  such  notice  would  Notice  by 
be  delivered  in  the  ordinary  course  of  post,  or  such  longer  time 

as  the  Comptroller  may  appoint  in  such  notice,  the  applicant 
shall  notify  in  writing  to  the  Comptroller  whether  or  not  he 
intends  to  be  heard  upon  the  matter.1 

13.  Whether  the  applicant  desires  to  be  heard  or  not,  the  Comptroller 
Comptroller  may  at  any  time  require  him  to  submit  a  statement  statement, 
in  writing  within  a  time  to  be  notified  by  the  Comptroller,  or  to 

attend  before  him  and  make  oral  explanations  with  respect  to 
such  matters  as  the  Comptroller  may  require. 

14.  The  decision  or  determination  of  the  Comptroller  in  the  Decision  to 

„  IT  ,  •  f  •-,      i     11    i        be  notified 

exercise  oi  any  such  discretionary  power  as  aforesaid  shall  be  to  parties, 
notified  by  him  to  the  applicant,  and  any  other  person  affected 
thereby. 

15.  Any  person  desirous  of  exhibiting   an  invention  at  an  industrial  or 
industrial  or  international  exhibition,  or  of  publishing  any  de-  tionai 
scription  of  the  invention  during  the  period  of  the  holding  of  the 
exhibition,  or  of  using  the  invention  for  the  purpose  of  the 
exhibition  in  the  place  where  the  exhibition  is  held,  shall,  after 

the  Board  of  Trade  have  issued  a  certificate  that  the  exhibition 
is  an  industrial  or  international  one,  give  to  the  Comptroller 
notice 2  in  writing  of  his  intention  to  exhibit,  publish,  or  use  the 
invention,  as  the  case  may  be. 

For  the  purpose  of  identifying  the  invention  in  the  event  of 
an  application  for  a  patent  being  subsequently  made  the  applicant 
shall  furnish  to  the  Comptroller  a  brief  description  of  his  in- 
vention, accompanied,  if  necessary,  by  drawings,  and  such  other 
information  as  the  Comptroller  may  in  each  case  require. 

16.  Any  document  for  the  amending  of  which  no  special  pro-   power  of 
vision  is  made  by  the  said  Acts  may  be  amended,  and  any  irregu-   £tIclfnd  enfc' 
larity  in  procedure,  which  in  the  opinion  of  the  Comptroller  may 

be  obviated  without  detriment  to  the  interests  of  any  person,  may 
be  corrected,  if  and  on  such  terms  as  the  Comptroller  may 
think  fit. 

16A.  Any  application,  notice,  or  other  document  authorised  or 
required  to  be  left,  made,  or  given  at  the  Patent  Office  or  to  the 
Comptroller  or  to  any  other  person  under  these  Kules,  may  be 

1  As  to  this  notification  see  Form  E . 

2  The  form  of  this  notice  is  given  in  Form  0. 


380 


Xanoorln 

which,  aii'l 

1-.T-    •    - 

i-  '  n 

-,\  :  .  • 


>  a  pr.  paid  letter  through  the  poet,  and  if  so  sent  shall  be 
deemed  to  have  been  left,  made,  or  given  at  the  time  when  the 
letter  containing  the  same  would  1  •  I  in  the  ordinary 

.     In   proving  such  sen-ire  or  sending  it  shall  be 
siiflicieni  to  i  -.he  letter  was  properly  addressed  and  put 

into  tin-  ] 

17.  MM  .statutory  I  >« durations  required  by  the  Raid  Acts 
and  these  KuK  s,  or  UM  .1  in  any  proceedings  Uiereonder,  shall  be 
made  an<l  subscribed  as  follows: — 

(u)  In  tlu-  I "niteil  Kingdom  before  any  Justice  of  the  Peace 
or  any  Commissioner  or  other  officer  authorised  by 
law  in  any  part  of  the  ('mud  Kingdom  to  administer 
an  oath  for  the  purpose  af  any  legal  proceeding. 
(b)  In  any  other  part  of  her  Majesty's  dominions,  before  any 
court,  judge,  justice  of  the  peace,  or  any  officer  autho- 
rised by  law  to  administer  an  oath  there  for  the  pur- 
pose of  a  le^al  proceeding ;  and 

If  made  out  of  lui  Majesty's  dominions  before  a  I'.iitisli 
minister,  or  person  exercising  the  functions  of  a  Hi 
minister,  or  a  consul,  vice-consul,  or  other  person  exer- 
< -i-ing  the  functions  of  a  liritish  consul,  or  a  notary 
public,  or  before  a  judge  or  magistrate. 

1~.\.  Statutory  declarations  and  affidavits  shall  be  headed 
in  the  matter  or  matters  to  which  they  relate.  They  shall  be 
divided  into  paragraphs  consecutively  numbered,  and  each  para- 
graph shall  so  far  as  possible  be  confined  to  one  subject. 


recording 
application'. 


Application 
for  svpanOe 
patent*  by 
way  of 
amendment. 


Application  with  Provisional  or  Complete  Specification. 

18.  Applications  for  patents  sent  through  the  post  shall,  as 
far  as  may  be  practicable,  be  opened  and  numbered  in  the  order 
in  which  the  letters  containing  the  same  have  been  respect 
delivered  in  the  ordinary  course  of  post. 

Applications  left  at  the  Patent  Office  otherwise  than  through 
the  post  shall  be  in  like  manner  numbered  in  the  order  of  th<  ir 
receipt  at  the  Patent  Office. 

19.  Where  a  person  making  application  for  a  patent  includes 
therein  by  mistake,  inadvertence,  or  otherwise,  more  than  one 
invention,  he  may,  after  the  refusal  of  the  Comptroller  to  accept 
such  application,  amend  the  same  so  as  to  apply  to  one  inven- 
tion only,  and  may  make  application  for  separate  patents  for 
each  such  invention  accordingly. 

Even*  such  application  shall,  if  the  applicant  notify  his  desire 


PATENTS   RULES,    1890  381 

to  that  effect  to  the  Comptroller,  bear  the  date  of  the  first  appli- 
cation, and  shall,  together  therewith,  be  proceeded  with  in  the 
manner  prescribed  by  the  said  Acts  and  by  these  Eules  as  if  every 
such  application  had  been  originally  made  on  that  date. 

20.  An  application  for  a  patent  by  the  legal  representative  of  Application 
a  person  who  has  died  possessed  of  an  invention  shall  be  accom-  ta«ve  of*1 
panied  by  an  official  copy  of  or  extract  from  his  will  or  the  letters  Center. 
of  administration  granted  of  his  estate  and  effects  in  proof  of  the 
applicant's  title  as  such  legal  representative,  and  must  be  sup- 
ported by  such  further  evidence  as  the  Comptroller  may  require. 

21.  On  the  acceptance  of  a  provisional  or  complete  specifi-   xotieeana 
cation  the  Comptroller  shall  give  notice  thereof  to  the  applicant,   aunt  of 
and  shall  advertise  such  acceptance  in  the  official  journal  of  the  ilccePtance- 
Patent  Office. 

22.  Upon  the  publication  of  such  advertisement  of  acceptance   inspection 
in  the  case  of  a  complete  specification,  the  application  and  speci-   ance°ofPcom- 
fication  or  specifications  with  the  drawings,  if  any,  may  be  in-   cationS.pec' 
spected  at  the  Patent  Office  upon  payment  of  the  prescribed  fee. 

Application  on  Communication  from  Abroad. 

23.  An  application  for  a  patent  for  an  invention  communi-   communSca- 
cated  from  abroad  shall  be  made  in  the  form  Al  set  forth  in  the  abroad?" 
Second  Schedule  to  these  Eules.1 

International  and  Colonial  Arrangements. 

24.  The  term  '  foreign  application  '  shall  mean  an  application 
by  any  person  for  protection  of  his  invention  in  a  Foreign  State 
or  British  Possession  to  which  by  any  order  of  Her  Majesty  in 
Council  for  the  time  being  in  force  the  provisions  of  section  103 
of  the  Patents,  Designs,  and  Trade  Marks  Act,  1883,  have  been 
declared  applicable. 

25.  An  application  in  the  United  Kingdom  for  a  patent  for  any 
invention  in  respect  of  which  a  foreign  application  has  been  made 
shall  contain  a  declaration  that  such  foreign  application  has  been 
made  and  shall  specify  all  the  Foreign  States  or  British  Posses- 
sions in  which  foreign  applications  have  been  made  and  the  official 
date  or   dates  thereof  respectively.       The  application  must  be 
made  within  7  months  from  the  date  of  the  first  foreign  applica- 
tion, and  must  be  signed  by  the  person  or  persons  by  whom  such 
first  foreign  application  was  made.   If  such  person,  or  any  of  such 
persons,  be  dead,  the  application  must  be  signed  by  the  legal 

1  The  Patent  Office  requires  that  applicants  using  Form  Al  must  be 
resident  in  the  United  Kingdom. 


382  PATENTS  1800 

personal  representative  of  such  dead  perron,  as  well  as  by  the 

applicants   it  :m\. 

86.  The  application  in  tin-  I'i  shall  be  made  in 

•li.  1  OHM  A-J  in  the  second  S.-hedulr  t<>  these  Boles,  and  in  addi- 
tion to  the  specification,  provisional  or  complete,  left  with  such 
application,  must  be  accompanied  by 

(1)  A  copy  or  copies  of  tli«-  sj*  rifuMtion  ami  drawings  or  docn- 
im-nts  corn  >|>onding  thereto,  tiled  or  deposited  by  tin-  applicant 
in  tlu-  Patt-nt  Office  of  the  Korei-n  St:it«-  or    I'.riti-h  Possession 
in  respect  of  the  first  foreign  application  duly  certified  by  the 
official  chief  or  head  of  the  Pat,  of  -ncli  Foreign  State 
or  liritish  Possessions  as  aforesaid,  or  otherwise  verified  to  the 
satisfaction  of  the  Comptroller  ; 

(2)  A  statutory  declaration  as  to  the  identity  of  the  invention 
in  respect  of  which  the  application  is  made  with  the  invention  in 
respect  of  which  the  said  first  foreign  application  was  made,  and 
it'  the  specification  or  document  -nding  thereto  be  in  a 
foreign  language,  a  translation   thereof  shall  he  annexed  to  and 
verified  by  such  statutory  declaration. 

•11.  (  hi  receipt  of  such  application,  together  with  the  prescribed 
.Mcation  and  the  other  document  or  documents  accompanying 
the  same,  required  by  the  last  preceding  rule,  and  with  such  other 
proof,  if  any,  as  the  Comptroller  may  require  of  or  relating  to 
such  foreign  application  or  of  the  official  date  thereof,  the  Comp- 
troller shall  make  an  entry  of  the  applications  in  both  con: 
and  of  the  official  dates  of  such  applications  respectively. 

•J*v  All  further  proceedings  in  connection  with  such  application 
shall  be  taken  within  the  times  and  in  the  manner  prescribed  by 
the  Acts  or  Rules  for  ordinary  applications. 

•J!t.   The  patent  shall  he  entered  in  tin  of  Patents  as 

dated  of  the  date  on  which  the  first  foreign  application  was 
made,  and  the  payment  of  renewal  fees,  and  the  expiration  of  the 
patent,  shall  be  reckoned  as  from  the  date  of  the  first  foreign 
application. 

..'.<  and  methods  of  preparing  Diaii-inys  accomjxniij 
Provisional  or  Compl,  nations. 

80.  The  provisional  or  complete  specification  need  not  l>e  ac- 
companied by  drawings  if  the  specification  sufficiently  describes 
the   invention  without   them,  but,  if  drawings  are   furnished, 
they  should  accompany  the  provisional  or  complete  specification 
hich  they  refer,  except  in  the  case  provided  for  by  Rule  88. 


To  face.  page.  382. 


Specimen  drawing  for  Specifications. 

Border   line    z    an.   inch  ir-om,   eaLge.    of  paper. 


•Ror'eLer  lint.  S   fin.  inch,  from  ?aUf«,  of  paper 

Sixa  of  paper  for     f  ^  inches  by   8  inches. 

or 
13      ..       ..  1G  inches 


PATENTS   RULES,    1890  383 

No  drawing  or  sketch  such  as  requires  a  special  engraving  for 
letterpress  should  appear  in  the  specification  itself. 

81.  Drawings,  if  any,  must  be  delivered  at  the  Patent  Office 
either  in  a  flat  state  or  on  rollers,  so  as  to  be  free  from  folds, 
breaks,  or  creases. 

They  must  be  made  on  pure  white,  hot-pressed,  rolled,  or  Require- 
calendered  drawing  paper  of  smooth  surface  and  good  quality,1   paper,  etc. 
and  where  possible  without  colour  or  Indian-ink  washes. 

They  must  be  on  sheets  of  one  of  the  two  following  sizes  size  of 
(the  smaller  being  preferable)  :  13  inches  at  the  sides  by  8  inches 
at  the  top  and  bottom,  or  13  inches  at  the  sides  by  16  inches  at 
the  top  and  bottom,  including  margin,  which  must  be  half  an 
inch  wide.  If  there  are  more  figures  than  can  be  shown  on  one 
of  the  smaUer-sized  sheets,  two  or  more  of  these  sheets  should 
be  used  in  preference  to  employing  the  larger  size.  When  an 
exceptionally  large  drawing  is  required,  it  should  be  continued  on 
subsequent  sheets.  There  is  no  limit  to  the  number  of  sheets 
that  may  be  sent  in. 

To  insure  their  satisfactory  reproduction,  the  drawings  Quality  of 
must  be  executed  with  absolutely  black  Indian  ink ;  the  same 
strength  and  colour  of  fine  and  shade  lines  to  be  maintained 
throughout.  Section  lines,  and  lines  for  effect,  or  shading  lines, 
must  not  be  closely  drawn.  A  specimen  drawing  is  inserted  in 
illustration  of  this  requirement.  Eeference  figures  and  letters 
must  be  bold,  distinct,  not  less  than  £  of  an  inch  in  height ; 
and  the  same  letters  should  be  used  in  different  views  of  the 
same  parts.  In  cases  of  complicated  drawings,  the  reference 
letters  must  be  shown  outside  the  figure,  and  connected  with 
the  part  referred  to  by  a  fine  line. 

The  scale  adopted  should  be  large  enough  to  show  clearly   scale  of 
wherein  the  invention  consists,  and  only  so  much  of  the  appa-  drawings- 
ratus,  machine,  etc.,  need  be   shown   as  effects  this  purpose. 
When  the  scale  is  shown  on  the  drawing  it  should  be  denoted, 
not  by  words,  but  by  a  drawn  scale,  as  illustrated  in  the  specimen. 

Drawings  must  bear  the  name  of  the  applicant  (and  in  the   Drawings  to 
case  of  drawings  left  with  a  complete  specification  after  a  pro-   of^ppUcaut 
visional  specification,  the  number  and  year  of  the  application)  in   etc> 
the  left-hand  top  corner ;  the  number  of  sheets  of  drawings  sent 
and  the  number  of  each  sheet  in  the  right-hand  top  corner  ;  and 

1  As  the  drawings  are  copied  at  the  Patent  Office  for  publication  by  the 
process  of  photo-lithography,  this  rule  must  be  strictly  observed  in  order 
that  correct  copies  may  be  made. 


3S4 


•-K5»,    1890 


v.    • 

M  to  wood 

•    •  '  ' 


< 
<!r*wlnif«. 


f«>r 


".' 
Hon. 


;•     -. 


'     .;  •     '    - 
. 


Partira'mrt 

•  '  r    ' 
patent. 


Applicant'* 
•mence. 


reply. 


the  signature  of  the  applicant  or  his  agent  in  the  right-hand 
bottom  corner. 

No  written  description  of  th<  .  should  appear  on  the 

IV.  .':•/-. 


Wood  engravings,  or  representations  of  the  inven 
than   the  drawings  prepared  as  above  described,  will  not  be 
received,  unless  of  such  a  character  as  to  be  suitable  for  repro- 
>n  by  tlie  process  of  photo-lithography. 

:vj.  A  facsimile  of  the  original  drawings,  but  without  colour 
MI-  Indian -ink  washes,  and  prepared  strictly  in  accordance  with 
ill*-  regulations  prescribed  in    Kule  81,  must  accompany   tli. 
originals,  and  be  market!  •  trut  copy.' 

83.  If  an  applicant  desires  to  adopt  the  drawings  lodged  with 
his   provisional   specification  as  the  drawings  for  his  com 
specification,  he  should  refer  to  them  as  those  'left  with  the  pro- 
visional specification.' 

Opposition  to  Grants  of  Patent*. 

:>  I.  A  notice  of  opposition  to  the  grant  of  a  patent  shall  I 
Form  D,  and  shall  state  the  ground  or  grounds  on  which  Un- 
person giving  such  notice  (hereinafter  in  Hules  87,  88,  41,  and 
43  called  the  opponent  i  intends  to  oppose  the  grant,  and  must 
.•iied  l»y  him.  Such  notice  shall  *tatr  his  address  for  service 
in  the  United  Kingdom,  and  shall  be  accompanied  by  an  un- 
stamped copy. 

Q  h  notice  the  copy  thereof  shall  be  trans- 

mitted by  the  Comptroller  to  the  applicant. 

86.  Where  the  ground  or  one  of  the  grounds  of  opposition 
that  the  invention  has  been  patented  in  this  country  on  an  ap- 
plication of  prior  date,   the    number  and  date   of   such  prior 
application  shall  be  specified  in  the  noti<-.-. 

Within  14  days  after  the  expiration  of  two  months  from 
the  date  of  the  advertisement  of  the  acceptance  of  a  complete 
specification,  the  opponent  may  leave  at  the  Patent  Office  statu- 
tory declarations  in  support  of  his  opposition,  and  on  so  leaving 
shall  deliver  to  the  applicant  a  list  thereof. 

88.  Within  14  days  from  the  deliver}-  of  such  list  the  appli- 
cant may  leave  at  the  Patent  Office  statutory  declarations  in 
answer,  and  on  so  leaving  shall  deliver  to  the  opponent  a  list 
thereof,  and  within  14  days  from  such  delivery  the  opponent 
may  leave  at  the  Patent  Office  his  statutory  declarations  in  reply, 
and  on  so  leaving  shall  deliver  to  the  applicant  a  list  thereof. 
Such  last-mentioned  declarations  shall  be  confined  to  matters 
strictly  in  reply. 


PATENTS  RULES,    1890  385 

Copies  of  the  declarations  mentioned  in  this  and  the  last  pre- 
ceding Rule  may  be  obtained  either  from  the  Patent  Office  or 
from  the  opposite  party. 

39.  No  further  evidence  shall  be  left  on  either  side  except  by  closing  of 
leave  of  the  Comptroller  upon  the  written  consent  of  the  parties 

•duly  notified  to  him,  or  by  special  leave  of  the  Comptroller  on 
•application  in  writing  made  to  him  for  that  purpose. 

40.  Either  party  making  such  application  shall  give  notice 
thereof  to  the  opposite  party,  who  shall  be  entitled  to  oppose  the 
•application. 

41.  On  completion   of  the  evidence,  or  at  such  other  time   Notice  of 
•as  he  may  see  fit,  the  Comptroller   shall  appoint  a  time  for 

the  hearing  of  the  case,  and  shall  give  the  parties  ten  days' 
notice  at  the  least  of  such  appointment.  If  the  applicant  or 
opponent  desires  to  be  heard  he  must  forthwith  send  the  Comp- 
troller an  application  on  Form  E.  The  Comptroller  may  refuse 
to  hear  either  party  who  has  not  sent  such  application  for  hear- 
ing. If  neither  party  applies  to  be  heard,  the  Comptroller  shall 
decide  the  case  and  notify  his  decision  to  the  parties. 

42.  On  the  hearing  of  the  case  no  opposition  shall  be  allowed 


in  respect  of  any  ground  not  stated  in  the  notice  of  opposition  ;  opposition  in 
and  where  the  ground  or  one  of  the  grounds  is  that  the  invention  c.isclm 
lias  been  patented  in  this  country  on  an  application  of  prior  date, 
the  opposition  shall  not  be  allowed  upon  such  ground  unless  the 
number  and  date  of  such  prior  application  shall  have  been  duly 
•specified  in  the  notice  of  opposition. 

48.  Where  the  ground  of  an  opposition  is  that  the  appli- 
cant has  obtained  the  invention  from  the  opponent  or  from  a 
person  of  whom  such  opponent  is  the  legal  representative,  unless 
evidence  in  support  of  such  allegation  be  left  at  the  Patent  Office 
within  the  time  prescribed  by  these  Rules,  the  opposition  shall  be 
deemed  to  be  abandoned,  and  a  patent  shall  be  sealed  forthwith. 

44.  The  decision  of  the  Comptroller  after  hearing  any  party  Decision  to 
who  applies  under  Rule  41  shall  be  notified  by  him  to  the  parties. 


Certificates  of  Payment  or  Benewal. 

45.  If  a  patentee  intends  at  the  expiration  of  the  fourth  or  Pin-mont  of 
eighth  year  from  the  date  of  his  patent  to  keep  the  same  in  force,  ^  '!oo/0/for 
he  shall,  before  the  expiration  of  such  fourth  or  eighth  year,  as  o™^™™08 
the  case  may  be,  subject  as  hereinafter  provided,  pay  the  pre- 

scribed fee  of  501.  or  100/.  as  the  case  may  be. 

46.  In  the  case  of  patents  granted  before  the  commencement  AS  to 
of  the  said  Acts,  the  above  Rule  shall  be  read  as  if  the  words  granted 

c  c 


PATENTS  RULES,   1890 


(.::;• 


•  seventh  year '  were  therein  written  instead  of  the  words  '  <• 

\.  .1!.' 

IT.  If  the  patentee  intends  to  pay  annual  fees  in  lien  of  tho 
above-mentioned  fees  of  50/.  and  100/.,  lie  shall,  before  the  ex- 
piration of  tli.'  fourth  and  each  succeeding  year  daring  the  term 
of  the  patent,  until  and  inclusive  of  the  thirteenth  year  thereof 
pay  the  prescribed  fee.  Tin  Form  .1  in  the  second  Schedule, 
duly  stamped,  should  be  used  for  the  purpose  of  this  and  the 
payment  referred  to  in  Huh-  l"i. 

On  due  compliance  with  these  Rules,  and  as  soon  as  may 
be  after  such  respective  periods  as  aforesaid,  or  any  enlargement 
thereof  respectively  duly  granted,  the  Comptroller  shall  issue  a 
certificate  that  the  preserilx-d  payment  has  been  duly  made. 

Enltirijcmcnt  of  7 

,.:.,...  I'-'.  An  application  for  an  enlargement  of  the  time  formal. 

mu   a  prescribed  payment  shall  state  in  detail  the  circumstances  in 

1  which  the  patentee  by  accident,  mistake,  or  inadvertence  has 

failed  to  make  such  payment,  and  the  Comptroller  may  require 

the  patentee  to  substantiate  by  such  proof  as  he  may  think  neces- 

the  allegations  contained  in  the  application  for  enlarges 

50.  An  application  for  enlargement  of  time  for  leaving  or 
accepting  a  complete  specification  shall  state  in  detail  in  what 
circumstances,  and  upon  what  grounds,  such  extension  is  applied 
for,  and  the  Comptroller  may  require  the  applicant  to  sub- 
stantiate such  allegations  by  such  proof  as  the  Comptroller  may 
think  necessary. 

51.  The  time  prescribed  by  these  Rules  for  doing  any  act,  or 
taking  any  proceeding  thereunder,  may  be  enlarged  by  the  Comp- 
troller if  he  think  fit,  and  upon  such  notice  to  other  parties, 
and  proceedings  thereon,  and  upon  such  terms,  as  he  may  direct. 


I  \->  :.      ' 

:.-,    •    - 
leaving  ud 

••  .- 
ooaakto 
meiftc*. 
:.  ,. 


'  .     -.      : 


H*»ino*t  for 
leave  to 


\ 
mcut. 


N   •        .  f 

1  i'i"   "•'•        ; 


A  incndment  of  Specification. 

52.  A  request*  for  leave  to  amend  a  specification  must  be  signed 
by  the  applicant  or  patentee  (hereinafter  in  Rules  54,  55,  and 
58  called   the  applicant)  and  accompanied  by  a  duly  cei 
printed  copy  of  the  original  specification  and  drawings,  showing 
in  red  ink  the  proposed  amendment,  and  shall  be  advertised  by 
publication  of  the  request  and  the  nature  of  the  proposed  amend- 
ment in  the  official  journal  of  the  Patent  Office,  and  in  such  other 
manner,  if  any,  as  the  Comptroller  may  in  each  case  direct. 

53.  A  notice  of  opposition3  to  the  amendment  shall  state  the 

1  See  Form  K.  *  See  Form  F. 

*  The  form  of  this  notice  is  given  by  Form  G. 


PATENTS  RULES,    1890  387 

ground  or  grounds  on  which  the  person  giving  such  notice 
(hereinafter  called  the  opponent)  intends  to  oppose  the  amend- 
ment, and  must  he  signed  hy  him.  Such  notice  shall  state  his 
address  for  service  in  the  United  Kingdom,  and  shall  be  accom- 
panied by  an  unstamped  copy. 

54.  On  receipt  of  such  notice  a  copy  thereof  shall  be  trans-  Copy  for  th» 

applicant. 

mitted  by  the  Comptroller  to  the  applicant.1 

55.  Within  14  days  after  the  expiration  of  one  month  from  Opponent's 
the  first  advertisement  of  the  application  for  leave  to  amend,  the 
opponent  may  leave  at  the  Patent  Office  statutory  declarations 

in  support  of  his  opposition,  and  on  so  leaving  shall  deliver  to 
the  applicant  a  list  thereof, 

56.  Upon  such  declarations  being  left,  and  such  list  being  Further 
delivered,  the  provisions  of  Eules  38,  39,  40,  41,  and  44  shall  pru< 
apply  to  the  case,  and  the  further  proceedings  therein  shall  be 
regulated  in  accordance  with  such  provisions  as  if  they  were 

here  repeated. 

57.  Where  leave  to  amend  is  given  the  applicant  shall,  if  Require- 
the  Comptroller  so  require,  and  within  a  time  to  be  limited  by  tuereon. 
him,  leave  at  the  Patent  Office  a  new  specification  and  drawings 

as  amended,  to  be  prepared  in  accordance  with  Eules  10,  30, 
and  31. 

58.  Where  a  request  for  leave  to  amend  is  made  by  or  in  Leave  by 

"    .  order  of 

pursuance  of  an  order  of  the  Court  or  a  judge,  an  official  or  Court. 
verified  copy  of  the  order  shall  be  left  with  the  request  at  the 
Patent  Office. 

69.  Every  amendment  of  a  specification  shall  be  forthwith  Advertise- 
advertised  by  the   Comptroller  in   the  official  journal  of  the  amendment. 
Patent  Office,  and  in  such  other  manner,  if  any,  as  the  Comp- 
troller may  direct. 

Compulsory  Licences. 

60.  A  petition  to  the  Board  of  Trade  for  an  order  upon  a  Petition  for 
patentee  to  grant  a  licence  shall  show  clearly  the  nature  of  the  J^t  o7ry 
petitioner's  interest,  and  the  ground  or  grounds  upon  which  he  u 
claims  to  be  entitled  to  relief,  and  shall  state  in  detail  the  cir- 
cumstances of  the  case,  the  terms  upon  which  he  asks  that  an 

order  may  be  made,  and  the  purport  of  such  order. 

61.  The  petition  and  an  examined  copy  thereof  shall  be  left  T9i.bc  le.ft 

*  *•  with  evi- 

at  the  Patent  Office,  accompanied  by  the  affidavits  or  statutory  aence  at 

.  _  . .  ,     Patent 

declarations,  and  other  documentary  evidence,  if  any,  tendered  office. 
by  the  petitioner  in  proof  of  the  alleged  default  of  the  patentee. 

1  Applications  to  be  heard  by  the  Comptroller  must  be  in  Form  E. 

c  c  2 


NTs   WLEB,    18*0 

62.  Upon   peru  and  evidence,  nnleei  the 

£££«£*    Board  of  Trade  shall  be  of  opinion  that  the  order  should  be  at 
2S£"rJ?u^i.  once  reft*8^.  'hey  may  require  the  petitioner  to  attend  before 
the  Comptroller,  or  other  person  or  persons  appointed  by  them, 
to  receive  his  or  their  directions  at  to  further  proceedings  upon 
the  petition. 

68.  If  and  when  a  primd-facit  case  for  relief  has  been  made 
out  to  the  satisfaction  of  the  Board  of  Trade,  the  petitioner  shall 
upon  their  requisition,  and  on  or  before  a  day  to  be  named  by 
them,  deliver  to  the  patentee  copies  of  the  petition,  and  of  the 
affidavits  or  statutory  declarations  and  other  documentary 
dence,  if  any,  tendered  in  support  thereof. 

64.  Within  11  days  after  the  day  of  such  delivery  the  patentee 
shall  leave  at  the  Patent  Office  his  affidavits  or  statutory  decla- 
rations in  opposition  to  the  petition,  and  deliver  copies  the  i 

the  petitioner. 

65.  The  petitioner  within  11  days  from  such  deliver)-  shall 
leave  at  the  Patent  Office  his  affidavits,  or  statutory  declarations 
in  reply,  and  deliver  copies  thereof  to  the  patentee ;  such  last- 
mentioned  affidavits  or  declarations  shall  be  confined  to  matters 
strictly  in  reply. 

Further  66.  Subject  to  any  further  directions  which  the   Board  of 

'»"?-•  Trade  may  give,  the  parties  shall  then  be  heard  at  such  time, 
before  such  person  or  persons,  in  such  manner,  and  in  accordance 
with  such  procedure  as  the  Board  of  Trade  may,  in  the  circum- 
stances of  the  case,  direct,  but  so  that  full  opportunity  shall  be 
given  to  the  patentee  to  show  cause  against  the  petition. 

Register  of  Patents. 

Eutry ..(  67.  Upon  the  sealing  of  a  patent  the  Comptroller  shall  cause  to 

*r*ut"  be  entered  in  the  register  of  patents  the  name,  address,  and  de- 
scription of  the  patentee  as  the  grantee  thereof,  and  the  title  of 
the  invention. 

&qne»t  f..r          68.  Where  a  person  becomes  entitled  to  a  patent  or  to  any  share 

I."|Ii! '-n't'  *ul>"  or  interest  therein,  by  assignment,  either  throughout  the  United 

pn.pri.t  r-     Kingdom  and  the  Isle  of  Man,  or  for  any  place  or  places  therein, 

or  by  transmission  or  other  operation  of  law,  a  request '  for  the 

entry  of  his  name  in  the  register  as  such  complete  or  partial 

proprietor  of  the  patent,  or  of  such  share  or  interest  therein,  as 

the  case  may  be,  shall  be  addressed  to  the  Comptroller,  and  left 

at  the  Patent  Office. 

if         69.  Such  request  shall  in  the  case  of  individuals  be  made 
and  signed  by  the  person  requiring  to  be  registered  as  proprietor, 
1  See  Form  L. 


I 


PATENTS  EULES,   1890  889 

or  by  liis  agent  duly  authorised  to  the  satisfaction  of  the  Comp- 
troller, and  in  the  case  of  a  hody  corporate  by  their  agent, 
authorised  in  like  manner. 

70.  Every  such  request   shall  state  the  name,  address,  and   Particular* 

to  be  stated  * 

description  of  the  person  claiming  to  be  entitled  to  the  patent,  hi  request ' 
or  to  any  share  or  interest  therein,  as  the  case  may  be  (herein- 
after called  the  claimant),  and  the  particulars  of  the  assignment, 
transmission,  or  other  operation  of  law,  by  virtue  of  which  he 
requires  to  be  entered  in  the  register  as  proprietor,  so  as  to  show 
the  manner  in  which,  and  the  person  or  persons  to  whom,  the 
patent,  or  such  share  or  interest  therein  as  aforesaid,  has  been 
assigned  or  transmitted. 

71.  Every  assignment  and  every  other  document  containing,  Production 
giving  effect  to,  or  being  evidence  of,  the  transmission  of  a  patent  mentsof 
or  affecting  the  proprietorship  thereof  as  claimed  by  such  request,  other  proo^ 
except  such  documents  as  are  matters  of  record,  shall  be  pro- 
duced to   the  Comptroller,   together    with    the   request   above 
prescribed,  and  such  other  proof  of  title  as  he  may  require  for 

his  satisfaction. 

As  to  a  document  which  is  a  matter  of  record,  an  official  or 
certified  copy  thereof  shall  in  like  manner  be  produced  to  the 
Comptroller. 

72.     There  shall  also  be  left  with   the   request   an   attested  C°P'«S  tor- 
copy  of  the  assignment  or  other  document  above  required  to  be  office. 
produced. 

As  to  a  document  which  is  a  matter  of  record,  an  official  or  certi- 
fied copy  shall  be  left  with  the  request  in  lieu  of  an  attested  copy. 

73.  A  body  corporate  may  be  registered  as  proprietor  by  its  ^ly  cor. 
corporate  name.  iwrate. 

74.  Where  an  order  has  been  made  by  her  Majesty  in  Council  Entry  of 
for  the  extension  of  a  patent  for  a  further  term  or  for  the  grant  i4ivyS° 

of  a  new  patent,  or  where  an  order  has  been  made  by  the  Court  ^°the  Court, 
for  the  revocation  of  a  patent  or  the  rectification  of  the  register 
under  section  90  of  the  Act  of  1883,  or  otherwise  affecting  the 
validity  or  proprietorship  of  the  patent,  the  person  in  whose 
favour  such  order  has  been  made  shall  forthwith  leave  at  the 
Patent  Office  an  office  copy  of  such  order.  The  register  shall 
thereupon  be  rectified,  or  the  purport  of  such  order  shall  other- 
wise be  duly  entered  in  the  register,  as  the  case  may  be. 

75.  Upon  the  issue  of  a  certificate  of  payment  under  Eule  48,   £»try  of 
the  Comptroller  shall  cause  to  be  entered  in  the  Register  of  Patents  tees  on  issue 
a  record  of  the  amount  and  date  of  payment  of  the  fee  on  such  cat£rtl1 
certificate. 


If  a  patentee  fails  to  make  any  prescribed  payment  within 
; '...'.        tin-  prescribed  time,  or  any  enlargement  thereof  duly  granted, 

such  failure  shall  be  duly  entered  in  the  register. 

'  •     -  77.   An  attested  copy  of  every  licence    granted  under  a 

patent  shall  be  left  at  the  Patent  Office  by  the  licensee,  with  a 
request1  that  a  notification  thereof  may  be  entered  in  the 
register.  The  licensee  shall  cause  the  accuracy  of  such  copy 
to  be  certified  as  the  Comptroller  may  direct,  and  the  original 
licence  shall  at  the  same  time  be  produced  and  left  at  the  Patent 
Office  if  required  for  further  verification. 

Boon  o«  The  Register  of  Patents  shall  be  open  to  the  inspection  of 

!,  V'.'.      :   the  public  on  every  week  day  between  the  hours  of  ten  and  four, 

ft  on  the  days  and  at  the  times  following: — 

(a)  Christmas  day,  Good  Tri-lay.  ih«-  day  observed  as  i 

Majesty's  birthday,  days  observed  as  days  of  public  fast 
or  thanksgiving,  and  days  observed  as  holidays  at  the 
Bank  of  England  ;  or 

(b)  Days  which  may  from  thin-  to  time  be  notified  by  a  placard 

posted  in  a  conspicuous  place  at  the  Patent  Office ; 

(c)  Times  when  the  register  is  required  for  any  purpose 

of  official  use. 

certified  79.  Certified  copies  of  any  entry  in  the  register,  or  certified 

document*,  copies  of,  or  extracts  from,  patents,  specifications,  disclaimers, 
affidavits,  statutory  declarations,  and  other  public  documents 
in  the  Patent  Office,  or  of  or  from  registers  and  other  books  kept 
there,  may  be  furnished  by  the  Comptroller  on  payment  of  the  pre- 
scribed fee. 

Power  to  dispense  with  Evidence,  etc. 

80.  Where  under  these  Rules  any  person  is  required  to  do 
any  act  or  thing,  or  to  sign  any  document,  or  to  make  any  declar- 
ation on  behalf  of  himself  or  of  any  body  corporate,  or  any 
document  or  evidence  is  required  to  be  produced  to  or  left  with 
the  Comptroller,  or  at  the  Patent  Office,  and  it  is  shown  to  the 
satisfaction  of  the  Comptroller  that  from  any  reasonable  cause 
such  person  is  unable  to  do  such  act  or  thing,  or  to  sign  such 
document,  or  make  such  declaration,  or  that  such  document  or 
evidence  cannot  be  produced  or  left  as  aforesaid,  it  shall  be  law- 
ful for  the  Comptroller,  with  the  sanction  of  the  Board  of  Trade, 
and  upon  the  production  of  such  other  evidence,  and  subject  to 
such  terms  as  they  may  think  fit,  to  dispense  with  any  such  act 
cv  tli in?,  document,  declaration,  or  evidence. 

1  See  Form  M. 


PATENTS  RULES,    1890  391 

Eepeal. 

81.  All  general  rules  heretofore  made  by  the  Board  of  Trade 
under  the  Patents,  Designs,  and  Trade  Marks  Acts,  1883  to  1888, 
and  in  force  on  the  81st  day  of  March,  1890,  shall  be  and  they 
are  hereby  repealed  as  from  that  date,  without  prejudice,  never- 
theless, to  anything  done  under  such  rules  or  to  any  application 
then  pending. 

Dated  the  31st  day  of  March,  1890. 

M.  E.  HICKS-BEACH, 

President  of  the  Board  of  Trade. 


FIEST  SCHEDULE. 

List  of  Fees  Payable  on  and  in  connection  with  Letters  Patent. 
Up  to  Sealing. 

£     s.    d.        £    a.    d. 

1.  On  application  for  provisional  protection  .1      00 

2.  On  filing  complete  specification         .        .300 

400 

or 

3.  On  filing  complete  specification  with  first  application         400 

4.  On  appeal  from  Comptroller  to  law  officer.    By  appel- 

lant   800 

5.  On  notice  of  opposition  to  grant  of  patent.    By  oppo- 

nent          0  10    0 

6.  On  hearing  by  Comptroller.     By  applicant  and  by 

opponent  respectively      .         .         .         .         .         .         100 

7.  On  application  to  amend  specification : — 

Up  to  sealing.     By  applicant        1  10    0 

8.  After  sealing.      By  patentee         300 

9.  On  notice  of  opposition  to  amendment.    By  opponent         0  10     0 

10.  On  hearing  by  Comptroller.     By  applicant  and  by 

opponent  respectively 100 

11.  On  application  to  amend  specification  during  action 

or  proceeding.     By  patentee 30 

12.  On  application  to  the  Board  of  Trade  for  a  compulsory 

licence.     By  person  applying  .         .         .        .         .         500 

13.  On  opposition  to  grant  of  compulsory  licence.    By 

patentee  .        .        .        ..        .        ..        .        500 

14.  On  certificate  of  renewal : — 

Before  end  of  four  years  from  date  of  patent    .  50     0     0 

15.  Before  end  of  seven  years,  or  in  the  case  of  patents 

granted  under  the  '  Patents,  Designs,  and  Trade 
Marks  Act,  1883,'  before  the  end  of  eight  years 
from  date  of  patent 100  0  0 


3  '.'•_'  LIST  OF  FEES 


Or  in  lieu  of  the  fees  of  Ml.  and  100/.  the  following 

annual  fee*:— 
Id.      Before  the  expiration  of  the  1th  year  from  the  date 

i.f  the  patent  ........      10    0    0 

17.  .  ..  5th  .       10    0    0 

18.  .  f.th  ,  .       10    0    0 

19.  7th  .       10    0    0 

20.  Hih  „        .       15    0    0 
lil.                                       ..              l»tli  .       1       0    O 
•J-J.                                                     10th 

llth  .       90    0    0 

Jl  ..  .  12th  .       20    0    0 

2.V  .  ..  i:ith  .....      20    0    0 

On  enlargement  of  time  for  i>n\meiit  of  renewal  fees  : 
26.     Not  exceeding  1  month       ......        800 

•JT.  ..  2  months    ......        700 

ML  .  8  months     ......      10    0    0 

29.     For  everyentryof  an  assignment,  transmission,  agree- 

ment, licence,  or  extension  of  patent      .        .        .        0  10    0 
80.     For  duplicate  of  letters  patent,  each  .        .        .         .        200 

HI.     On  notice  to  Comptroller  of  intended  exhibition  of  a 

patent  under  section  89  ......        0  10    0 

82.     Search  or  inspection  fee     .....  each        010 

88.     For  office  copies  —  every  100  words  (but  never  less 

than  one  shilling)    .......        004 

84.    For  office  copies  of  drawings,  cost  according  to  agree- 

ment. 

.'!."..     l-'i.r  certifying  office  copies,  MS.  or  printed        .each        010 
8C.     On    request  to   Comptroller    to   correct   a   clerical 

error  :  —  Up  to  sealing     ......        050 

After  sealing     ......        100 

1  "or  certificate  of  Comptroller  under  section  96  .        .        050 
88.     For  altering  address  in  register  .....        050 

For  enlargement  of  time  for  filing  complete  specifica- 
tion, not  exceeding  one  month         .        .        .        .        200 

40.    For  enlargement  of  time  for  acceptance  of  complete 
specification  :  — 
Not  exceeding  1  month    ......        200 

„  2  months  ......        4.00 

,,  8  months  ......        600 

81st  March,  1890.        M.   E.  HICKS-BEACH, 

President  of  the  Board  of  Trade. 
Approved, 

B.   E.  WELBY, 

For  the  Lords  Commissioners  of  Her 
March,  1S90.  Majesty's  Treasury. 


PATENTS  RULES,    1890 


THE   SECOND   SCHEDULE. 
Forms. 

PAGK 

A.  Form  of  Application  for  Patent 893 

Al.       „                 „                 „               communicated  from  abroad  .  895 
A2.       „                 „                „               under      international      and 

colonial  arrangements  ......  396 

B.  „          Provisional  Specification 396 

C.  „         Complete             „              397 

D.  „          Opposition  to  Grant  of  Patent 397 

E.  ,,          Application  for  hearing  by  Comptroller     .         .         .  398 

F.  „                     „         to  amend  Specification  or  Drawings       .  398 

G.  „          Opposition  to  Amendment  of  Specification  or  Draw- 

ings          898 

H.        „          Application  for  Compulsory  Grant  of  Licence  .         .  399 

HI.      „          Petition  for  Compulsory  Grant  of  Licences       .         .  399 

1.         „          Opposition  to  Compulsory  Grant  of  Licences    .         .  400 

J.         „          Application  for  Certificate  of  Payment  or  Renewal  .  400 
K.        „          Application  for  Enlargement  of  Time  for  Payment  of 

Renewal  Fee .401 

L.         „          Bequest  to  enter  Name  upon  the  Register  of  Patents  401 
M.        „          Bequest  to  enter  Notification  of  Licence  in  Register  402 
K        „          Application  for  Duplicate  of  Letters  Patent      .         .  402 
O.        „          Notice  of  intended  Exhibition  of  Unpatented  Inven- 
tion          402 

P.         „          Bequest  for  Correction  of  Clerical  Error  .         .         .  403 

Q.        „          Certificate  of  Comptroller 403 

B.        „          Notice  for  Alteration  of  an  Address  in  Register         .  403 
S.         „          Application  for  Entry  of  Order  of  Privy  Council  in 

Register •  403 

T.        „          Appeal  to  Law  Officer 404 

U.        „         Application  for  extension  of  time  for  leaving  a  com- 
plete Specification 404 

V.        „         Application  for  extension  of  time  for  acceptance  of 

complete  Specification 405 


SECOND   SCHEDULE. 
Patents,  Designs,  and  Trade  Marks  Acts,  1883  to  1888. 

Form  A. 
[To  be  accompanied  by  two  Copies  of  Form  B.  or  of  Form  C.] 

APPLICATION  FOR  PATENT. 

[Here  insert  name  and  full  address  and  calling  of  applicant  or 
applicants],  do  hereby  declare  that  in  possession  of  an  inven- 

tion the  title  of  which  is  [Here  insert  title  of  invention]  that  [In  the 


3'J4  SCHEDULES 

cote  of  more  than  one  </.  ^ate  whether  all,  or  if  not,  who  ie 

or  are  the  inventor  or  invtnton]  the  true  and  first  inventor        thereof; 
i.it  the  same  in  not  in  OM  by  any  other  person  or  persons  to  the 
best  of       knowledge  and  belief;  and  humbly  pray  that  a  Patent 

may  be  granted  to         f<>r  the  said  invention. 

Dated  day  of  18    . 

[To  be  tigned  by  applicant  or  appli- 
cant*. In  the  COM  of  a  firm 
each  member  of  thf  firm  mutt 
•ion.] 

NOTE.— Where  application  is  made  through  an  Agent  (Rule  8),  the 
authorisation  on  the  back  (if  used)  should  be  signed  by  the  applicant  or 
applicants. 

To  the  Comptroller, 

Patent  Office,  25  Southampton  Build  ingt. 
Chancery  Lane,  London,  W.C. 


For  the  convenience  of  applicants,  suggested  forms  of  authorisation 
to  an  Agent  and  statement  of  address  respectively  arc  printed  below. 


(1.)  Where  application  if  made  through  an  Agent  (Rule  8). 

hereby  appoint 
of 

to  act  as  Agent  in  respect  of  the  within  application  for  a 

Patent,  and  request  that  all  notices,  requisitions,  and  communications 
relating  thereto  may  be  sent  to  such  Agent  at  the  above  address. 

day  of  18     . 

[To  be  signed  by  applicant  or  appli- 
cant*.] 

(2.)  Where  application  it  made  without   an  Agent  (Itule  9l. 

hereby  request  that  all  notices,  requisitions,  and  commu- 
nications in  respect  of  the  within  application  may  he  sent  to 
at 

day  of  18    . 

[To  be  tigned  by  applicant  or  appli- 
oantt.] 


PATENTS  RULES,    1890  395 

Form  Al. 

[To  be  accompanied  by  two  copies  of  Form  B.  or  of  Form  C.] 
Application  for  Patent  for  Invention  communicated  from  Abroad. 

I,  [Here  insert  name  and  full  address  and  calling  of  applicant] 
of  in  the 

county  of  do  hereby  declare  that  I  am  in 

possession  of  an  invention  the  title  of  which  is  [Here  insert  title  of  in- 
vention] which  invention  has  been  communicated  to  me  by  [Here  insert 
name,  address,  and  calling  of  communicant]  that  I  claim  to  be  the 
true  and  first  inventor  thereof ;  and  that  the  same  is  not  in  use  within 
the  United  Kingdom  of  Great  Britain  and  Ireland  and  the  Isle  of 
Man  by  any  other  person  or  persons  to  the  best  of  my  knowledge 
and  belief ;  and  I  humbly  pray  that  a  Patent  may  be  granted  to  me 
for  the  said  invention. 

Dated  day  of  18     . 

[To  be   signed  by  applicant  or 
applicants.] 

NOTE. — Where  application  is  made  through  an  Agent  (Rule  8),  the 
authorisation  on  the  back,  if  used,  should  be  signed  by  the  applicant  o  l' 
applicants. 

To  the  Comptroller, 

Patent  Office,  25  Southampton  Buildings, 
Chancery  Lane,  London,  W.C. 


For  the  convenience  of  applicants,  suggested  forms  of  authorisation 
to  an  Agent  and  statement  of  address  respectively  are  printed  below. 

(1.)  WJiere  application  is  made  through  an  Agent  (Rule  8). 

hereby  appoint 
of 

to  act  as  Agent  in  respect  of  the  within  application  for  a 

Patent,  and  request  that  all  notices,  requisitions,  and  communications 
relating  thereto  may  be  sent  to  such  Agent  at  the  above  address. 

day  of  18     . 

[To  be  signed  by  applicant  or  appli- 
cants.] 

(2.)  Where  application  is  made  ivithout  an  Agent  (Rule  9). 

hereby  request  that  all  notices,  requisitions,  and  commu- 
nications in  respect  of  the  within  application  may  be  sent  to 
at 

day  of  18     . 

[To  be  signed  by  applicant  or  appli- 
cants.] 


r\i.  moo 

—  Form  AS. 

I 

I  A  1  i 

Am&uranm  i 

Hi  i,    tn»i-i-t  mi.  n,   n  ml  full  addrrtt  mid  ,-tll,  H,J 
cm-It  .-/  lite  <ij>jilii-ii,i(ii_  (In  In  ;;il   I    i,ir  \v«-i   ha\e  nuulc 

•ii  applications  fur  protection  <>f  n 

itmrrt  tit:  .        m  the  following  Fureign  Slate*  and  en  the 

following  official  date,  \  i/.  :     II,  re  inner!  the  name*  of  each   Foreign 

l,ij  tin    official  dat> 

lively],  and   in  tli<   f..ll,,\\  h    PoOMHMMM  tad  OH  tiM  feDowiQf 

official  dates.  \:  •   intert  (hi-  name*  uf  ,-arh  Ilritith  /'/•«>• 

fallowed  Inj  tin-  iij.j.ln  iitioii  in  each  renpertirely], 

That  the  said  invention  was  nut  in  u-o  uitliin  tin-  I'nitod  Kin^il«.m 
of  Great  Britain  and  Ireland  and  tin-  Isle  ..1  Man  hv  anv  other  l«non 
or  persons  bet  /'/-/-  itiaert  flic  nffu-inl  ,l,ifr  ,>f  thr  rnrlient 

ft"  'icutimi    to  the  IK  st  of  knowledge,  information,  and 

belief,  and  huniMy  prav  that  a  patent  in:t\  l»   granted  to 

for  the  said  invention  in  priority  to  other  applicants,  and  thatsm-h 
patent  shall  have  the  dat*  nsert  the  official  date  of  the  earliett 

foreign  appUeatitm^. 

[Signal  art  of  nj>j,licnii  ' 

•  - 
To  the  Ctwij>tr»lli-r, 

J'ntcnt  Office,  25  Sontliat>ipti»i  Huildinyt, 
Chancery  Lane,  L<>ml»n,  H'.C. 


mxiHil  it-Hit  Form  A.  Al.  ••/•  A2. 
Form  B. 

I'KOVISIONAL    Si  I  (III-    \TIOX. 

(To  be  furnished  in  Duplicate.) 

[Here  insert  title  at  in  declaration] 

[Here  intert  name,  anil  full  addrct*  and  calling  of  applicant  < 
plicantt  at  in  dn-lnrafion]  do  hereby  declare  the  nature  of  this  in- 
vention to  be  as  follows  :  —  [Here  insert  thort  deteription  of  invention.1 

i  K.-  Ko  stamp  is  required  on  this  document,  which  must  form  the 
commencement  of  the  Provisional  Specification  ;  the  continuation  to  be 
upon  wide  ruled  foolscap  paper  (but  on  one  side  only)  with  a  margin  of  two 
inches  on  left  hand  of  paper.  The  Provisional  Specification  and  the 
'  Duplicate  '  thereof  must  be  signed  by  the  applicant,  or  his  agent,  on  the 
In-t  sheet,  the  date  being  first  inserted  as  follows: 

'  Dated  this  daj  of  18     .' 

To  the  Comptroller, 

Patent  Office,  25  Southampton  liuiltlingi, 
Chancery  TMne,  London,  W.C. 


PATENTS  KULES,    1890 


397 


Form  C. 


Where  provisional  specifi- 
cation lia.s  l)foii  left,  quote 
No.  and  date. 

No. 

Date. 


COMPLETE  SPECIFICATION. 
(To  be  furnished  in  Duplicate — one  unstamped.) 

[Here  insert  title  as  in  declaration.] 

[Here  insert  name,  and  full  address  and  calling  of  applicant  or 
applicants  as  in  declaration]  do  hereby  declare  the  nature  of  this 
invention  and  in  what  manner  the  same  is  to  be  performed,  to  be 
particularly  described  and  ascertained  in  and  by  the  following  state- 
ment : 

[Here  insert  full  description  of  invention,  which  must  end  with  a 
distinct  statement  of  claim  or  claims,  in  the  following  form  : — 

'  Having  now  particularly  described  and  ascertained  the  nature  of 
my  said  Invention,  and  in  what  manner  the  same  is  to  be  performed, 
I  declare  that  ivhat  I  claim  is  :  ' 

Here  state  distinctly  the  features  of  novelty  claimed.     1,  2,  3.] 

NOTE. — This  document  must  form  the  commencement  of  the  Complete 
Specification  ;  the  continuation  to  be  upon  wide  ruled  foolscap  paper  (but 
on  one  side  only)  with  a  margin  of  two  inches  on  left  hand  of  paper.  The 
Complete  Specification  and  the  '  Duplicate '  thereof  must  be  signed  by 
the  applicant,  or  his  agent,  on  the  last  sheet,  the  date  being  first  inserted 
as  follows : 

'  Dated  this  day  of  18     .' 

To  the  Comptroller, 

Patent  Office,  25  Southampton  Buildings, 
Chancery  Lane,  London,  W.C. 

Form  D. 

FORM  OF  OPPOSITION  TO  GRANT  OF  PATENT. 
[To  be  accompanied  by  an  unstamped  copy.] 

I  [Here  state  name  and  full  address]  hereby  give  notice  of  my 
intention  to  oppose  the  grant  of  Letters  Patent  upon  application 
No.  of  ,  applied  for  by 

upon  the  ground  [Here  state  upon  ivhich  of  the  grounds  of  opposition 
permitted  by  section  11  of  the  Act  the  grant  is  opposed]. 

(Signed)  [Here  insert  signature  of  opponent] 
To  tlw  Comptroller, 

Patent  Office,  25  Southampton  Buildings, 
Chancery  Lane.  London,  W.C. 


. 


Form  E. 
KM  or  APPLICATION  FOB  HEARING  BY  THE  COMPTROLLER. 

V8K8  OF   REFUSAL   TO   ACCEPT,   OPPOSITION,   OR   APPLICATION!*  FOR 
AMENDMENT*,  ETC. 

Eta* 

<>f  [Here  i inert  address]  hereby 
apply  to  be  heard  in  reference  to 
nntl  request  that  I  may  receive  clue  notice  of  the  (lay  fixed  for  the 

hearing. 

Sir, 

Servant, 
To  the  Comptroller, 

Patent  OjKce,  25  Southampton  Building*, 
Chancery  Lane,  London,  • 

Form  F. 

FORM  OF  APPLICATION  FOB  A  s  OR 

DRA\\  r 

[Here  state  name  and  full  address  of  applicant  or  patentee]  seek 
leave  to  amend  the  specification  of  Letters  Patent  No.  of 

188  ,  as  shown  in  red  ink  in  tin  ri-py  of  tlie  original  specification  here- 
unto annexed. 

My  reasons  for  making  this  amendment  are  a»  follows :  [Here  state 
reasons  for  seeking  amendment ;  and  where  the  applicant  is  not  the 
fee,  state  what  interest  he  possesses  in  the  Letters  2'<t; 

(Signed)  [To  be  signed  by  applies 
To  the  Comptroller, 

Patent  Office,  25  Southampton  Buildings, 
Chancery  Lane,  I^mdon,  '• 


PATENT. 


Form  G. 

FORM  or  OPPOSITION  TO  AMENDMENT  OF  SPECIFICATION  OR 
DRAWINGS. 

[To  be  accompanied  by  an  unstamped  copy.] 

[Here  state  name  and  full  address  of  opponent  hcrel-ypve  notice 
of  objection  to  the  proposed  amendment  of  the  specification  or  draw- 
ings  of  Letters  Patent  No.  of  188  for  the  following 

reason  :  [Here  state  reason  of  opposition], 

(Signed) 
To  tlie  Comptroller, 

Patent  Office,  25  Southampton  Buildings, 
Chancery  Lane,  London,  W.C. 


PATENTS   ItULES,    1890 


399 


Form  H. 

TATEXT.  FORM  OF  APPLICATION  FOR  COMPULSORY  GRANT  OF  LICENCE. 

[To  be  accompanied  by  an  unstamped  copy.] 

'  [Here  state  name  and  full  address  of  applicant]  hereby  request  you 
to  bring  to  the  notice  of  the  Board  of  Trade  the  accompanying  petition 
for  the  grant  of  a  licence  to  me  by  [Here  state  name  and  address  of 
patentee  and  number  and  date  of  Jiis patent], 

(Signed) 

NOTE. — The  petition  must  clearly  set  forth  the  facts  of  the  case,  and  be 
accompanied  by  an  examined  copy  thereof.     See  Form  HI. 

To  the  Comptroller, 

Patent  Office,  25  Southampton  Buildings, 
Chancery  Lane,  London,  W.C. 


Form  Hi. 

FORM  OF  PETITION  FOR  COMPULSORY  GRANT  OF  LICENCES. 
To  the  Lords  of  the  Committee  of  Privy  Council  for  Trade. 

THE  PETITION  of  [Here  insert  name,  full  address,  and  description]  of 

in  the  county  of 

being  a  person  interested  in  the  matter  of  this  petition  as  hereinafter 
described : — 


SHEWETH  as  follows : — 


No. 


\vaB 


1.  A  patent  dated 
duly  granted  to 

for  an  invention  of  [Here  insert  title  of  invention]. 

2.  The  nature  of  my  interest  in  the  matter  of  this  petition  is  as 
follows: — [Here  state  fully  the  nature  of  petitioner's  interest], 

3.  [Here  state  in  detail  tlie  circumstances  of  the  case  under  section 
22  of  the  said  Act,  and  show  that  it  arises  by  reason  of  the  default 
of  the  patentee  to  grant  licences  on  reasonable  terms.     The  statement 
of  the  case  should  also  show  as  far  as  possible  that  the  terms  of  the 
proposed  order  are  just  and  reasonable.     The  paragraphs  should  be 
numbered  consecutively^ 

Having  regard  to  the  circumstances  above  stated,  the  petitioner 
alleges  that  by  reason  of  the  aforesaid  default  of  the  patentee  to  grant 
licences  on  reasonable  terms.  [Here  state  the  ground  or  grounds  on 


400 


PATENTS  RULES,   1890 


(6),  or  (c),  at  th 


PATENT. 


PATENT. 


ifiJ  in  the  language  of  section  22,  tnt'f 

ir  petitioner  therefore  pray*  that  an 
order  may  be  made  by  the  Board  of  Trade 
[Here  ttate  ike  purport  and  effect  of  the  pro* 
poeed  order,  and  the  term*  at  to  the  amount 
of  royal tiet,  terurity  fur  payment,  or 
trite,  upon  whir*  the  petitioner  claim*  to  60 
entitled  to  it.  n~ ,  or  tluit 

the  ]  may  have  such  other  relief  in 

the  premise*  as  the  Board  of  Trad' 

jllHt. 

Form  I. 

FORM  OK  OIL i-i  i ms   n.  (  oMi-t  I.SOBV  GRANT  or  l.i«  . 
[Here  ttatc  nnmc  <ind  full  tnldrett]  hereby  give  notice  of  objf 
to  the  application  of 

for  the  compulsory  grant  of  a  licence  under  Patent 
of  188  . 

(Signed) 
To  the  Comptroller. 

Patent  Office.  2">  S»nthamptim  Htiildingt, 
Chancery  Lone,  London,  W.C. 

Form  J. 

AITI.I.  ui"s   K.-I:  CKI:TIKH-ATK  OK  PAYMENT  OB  RKNMVU.. 

hereby  transmit  the  fee  prescribed  for  the  continua- 
tion in  force  of  Here  intert  name  of  patentee]  Patent  '  , 
of  18  for  a  further  period  of 

Name  [Here  intert  name  and  full 

AddroM 
To  the  Comptroller. 

Patent  Office,  25  Southampton  BuiMingt, 
Chancery  Lane,  London,  W.C. 


(This  part  of  the  form  to  be  filled  in  at  the  Patent  Offico.t 

OF  PAYMENT  OR  RENEWAL. 
Letters  Patent  No.  of  18    . 

18    . 

This  is  to  certify  that  did  tin- 

day  of  18  ,  make  the  prescribed  payment 

of  £  in  respect  of  a  period  of  from 

and  that  by  virtue  of  such  payment  the  rights  of  the  Patentee  remain 
in  force.  [See  tertian  17  of  the  Patentt,  Derigm,  and  Trade  Mnrt;9 
Act,  1883.] 

Patent  Office,  London. 


PATENTS  EULES,   1890 


401 


Form  K. 

FORM  OF  APPLICATION  FOR  ENLARGEMENT  OF  TIME  FOR  PAYMENT 

OF  EENEWAL  FEE. 
SIR, 

I  HEREBY  apply  for  an  enlargement  of  time  for  month 

in  which  to  make  the  payment  of  £  upon 

my  Patent,  No.  ,  of  188  .     The  circumstances  in  which  the 

payment  was  omitted  are  as  follows  [See  Rule  49.] 

I  am, 

Sir, 
Your  obedient  Servant, 

[Here  insert  full  address  to  which  receipt  is  to  be  sent.] 

To  the  Comptroller, 

Patent  Office,  25  Southampton  Buildings, 
Clumcery  Lane,  London,  W.C. 

Form  L. 

FORM  OF  REQUEST  TO  ENTER  NAME  UPON  THE  EEGISTER  OF 
PATENTS. 

I  [or  we.  Here  insert  name,  full  address,  and  description]  hereby 
request  that  you  will  enter  [my  or  our]  name  [or  names]  in  the  Register 
of  Patents : — 

[7  or  we]  claim  to  be  entitled  [Here  insert  the  nature  of  the  claim] 
of  the  Patent  No.  of  188  ,  granted  to  [Here  give  name  and  address, 
etc.,  of  patentee  or  patentees]  for  [Here  insert  title  of  the  invention] 
by  virtue  of  [Here  specify  the  particulars  of  such  document,  giving 
its  date,  and  the  parties  to  the  same,  and  showing  hoiu  the  claim  here 
made  is  substantiated]. 

And  in  proof  whereof  I  transmit  the  accompanying  [Here  insert  the 
nature  of  the  document]  with  an  examined  copy  thereof.  [Where  any 
document  which  is  a  matter  of  record  is  required  to  be  left,  a  certi- 
fied or  official  copy  in  lieu  of  an  attested  copy  must  be  left.] 

I  am, 

Sir, 
Your  obedient  Servant, 

To  the  Comptroller, 

Patent  Office,  25  Southampton  Buildings, 
Chancery  Lane,  London,  W.C. 


D  D 


1ATKNTS   RULES,  KM 


r\  on 


Form  M. 

FOB*  or  REQUEST  TO  KXTKB  NOTIFICATION  or  LICENCE  is*  THE 
REGISTER  or  PATENTS. 


SIB, 


I  HKRKDY  transmit  an  attested  copy  of  a  licence  granted  to  me 


under  Patent  N  <>f  188  ,  as  well  as  the  original  licence  for 

verification,  and  I  have  to  request  that  a  notification  thereof  may  be 
entered  in  the  Register. 

I  am. 

Your  obedient  Sen-ant, 
[Here  insert  ftt II  address.] 

To  the  Comptroller, 

Patent  Office,  25  Southampton  Buildings, 
Chancery  Lane,  London,  W.C. 

Form  N. 
APPLICATION  FOB  DUPLICATE  OF  PATENT. 

Date. 

SIR, 

I  REGRET  to  have  to  inform  you  that  the  Letters  Patent,  dated 
[Here  insert  date,  No.,  name,  and  full  address  of  Patentee]     No. 

granted  to 

for  an  invention  of  [Here  insert  title  of  invention]  have  been  [Here 
insert  the  word  '  destroyed  '  or  '  lost,'  as  the  ease  may  be]. 

I  beg  therefore  to  apply  for  the  issue  of  a  duplicate  of  such  Letters 
Patent  [Here  state  interest  possessed  by  applicant  in  the  Letters 
Patent.] 

[Signature  of  Applicant.] 

To  the  Comptroller, 

Patent  Office,  25  Southampton  Buildings, 
Chancery  Lane,  London,  W.C. 

Form  O. 
NOTICE  OF  INTENDED  EXHIBITION  OF  AN  UNPATENTED  INVENTION. 

[Here  state  name  and  full  address  of  Applicant]  hereby  give 
notice  of  my  intention  to  exhibit  a  of 

at  the 

Exhibition,  which  [State  '  opened  '  or  '  is  to  open ']  of  18     , 

under  the  provisions  of  the  Patents,  Designs,  and  Trade  Marks  Act  of 
1888. 

[Insert  brief  description  of  invention,  ttrith  drataings  if  necessary] 
herewith  enclose 

(Signed) 
To  the  Comptroller, 

Patent  Office,  25  Southampton  Building*, 
Chancery  Lane,  London,  W.C. 


PATENTS  EULES,    1890 


403 


PATBKT. 


PATENT. 


PATENT. 


Form  P. 

FORM  OF  BEQUEST  FOR  CORRECTION  OF  CLERICAL  ERROR. 
SIR, 

I  HEREBY  request  that  the  following  clerical  error  [or  errors]  in 
the  [Here  state  whether  in  application,  specification,  or  register} 
No.  of  18  ,  may  be  corrected  in  the  manner  shown  in  red 

ink  in  the  certified  copy  of  the  original  [Here  state  whether  in  appli- 
cation, specification,  or  register]  hereunto  annexed. 

Signature 

Full  Address 
To  the  Comptroller, 

Patent  Office,  25  Soutliampton  Buildings, 
Clianccry  Lane,  London,  W.C. 

Form  Q. 
CERTIFICATE  OF  COMPTROLLER-GENERAL. 

Patent  Office, 

London, 

188  . 

I,  ,  Comptroller-General  of  Patents, 

Designs,  and  Trade  Marks,  hereby  certify 

To  [Here  insert  name  and  full  address  of  pcrson^reguiring  the  informa- 
tion]. 

Form  R. 

FORM  OF  NOTICE  FOR  ALTERATION^OF  AN  ADDRESS  IN  REGISTER. 
SIR, 

[Here  state  name  or  names  and  full  address  of  applicant  or  appli- 
cants], hereby  request  that  address  nowjipon  the  Register  may 
be  altered  as  follows : — 

[Here  insert  full  address^ 

Sir, 

Your  obedient  Servant, 
To  the  Comptroller, 

Patent  Office,  25  Soutliamptnn  Buildings, 
Chancery  Lane,  London,  W.C. 

Form  S. 
FORM  OF  APPLICATION  FOR  ENTRY  OF  ORDER  OF  PRIVY  COUNCIL 

IN  REGISTER. 

[Here  stale  name  and  full  address  of  applicant]  [hereby  transmit  an 
office  copy  of  an  Order  in  Council  with  reference  Jto  [Here  state  the 
purport  of  the  order], 

Sir, 

Your  obedient*  Servant, 
To  the  Comptroller, 

Patent  Office,  25  Southampton  Buildings, 
Chancery  Lane,  London,  W  <7 

p  D  2 


404 


PATENTS  RULES,   1WO 


PATENT. 


Form  T. 
FORM  or  APPEAL  TO  LAW  OFFICER. 

I,  [Here  insert  name  and  full  address  of  ajytelltint]  hcrebx 
notice  of  my  inu  -ntion  to  appeal  to  the  Law  Officer  from  (Here  insert 
the  •  tlcciiiun  '  or  •  that  jmrt  of  the  derision,'  a*  the  ease  may  be]  of 
the  Comptroller  of  the  day  of  18     , 

whereby  ho  [Here  inter!  '  refuted  Or  allowed]  application  f< 
or  *  refuted  [or  allowed]  aj>j,Iir,ttinn  for  leave  to  amend  1 
otherwise  at  Hie  case  may  be]  No.          [Insert  number  and  yr> 
«  ar  18    . 

Signature 


N.li.  —  This  notice  has  to  be  scut  to  the-  Comptroller-General  at  the 
Patent  Ofticr.  I.«mlnn,  W.C.,  and  a  copy  of  same  to  the  Law  Officer*' 
Clerk  at  1;  Hoyul  Courts  of  Justice,  London. 


Form  U. 

Farm  <•/  . :  ,  l-'.itentian  of  Time  for  leaving  a  C'»mj'lrle 

Specification. 

SIR, 

luTi-l-y  apply  for  extension  of  time  for  one  mouth  in 
which  to  leave  a  Complete  Specification  upon  application 
dated 

The  circumstances  in  and  grounds  upon  which  this  exteusii 
applied  for  are  as  follows : — [See  little  50.] 

Sir, 
Your  obedient  Servant. 

[To  be  signed  by  applicant 
or  applicants  or  hit  <>r 
their  agent.] 

To  the  Comptroller, 

Patent  Office,  25  Southampton  Duildingt, 
Chancery  Lane,  London,  H'.C. 


PATENTS  RULES,    1890  405 


Form  V. 

Form  of  Application  for  Extension  of  Time  for  Acceptance  of  a 
Complete  Specification. 

SIR, 

hereby  apply  for  extension  of  time  for 

month  for  the  acceptance  of  the  Complete  Specification  upon 

application  No.  dated 

The  circumstances  in  and  grounds  upon  which  this  extension  is 
applied  for  are  as  follows  : — [See  Eule  50.] 

Sir, 
Your  obedient  Servant, 

[To  be  signed  by  applicant 
or  applicants  or  his  or 
their  agent.] 

To  the  Comptroller, 

Patent  Office,  25  Soutliampton  Buildings, 
Clumcery  Lane,  London,  W.C. 

81st  March,  1890.        M.  E.  HICKS-BEACH, 

President  of  the  Board  of  Trade. 


400 


RULES  REGULATING    THE  PRACTICE   AND  PRO- 
CEDURE ON  APPEALS  TO  THE  LAW  OFFICERS. 

I.  When  any  person  intends  to  appeal  to  the  law  officer  from 
a  decision  of  the  Comptroller  in  any  case  in  which  such  appeal  is 
given  by  the  Acts,  he  shall  within  14  days  from  the  date  of  the 
decision  appealed  against  file  in  the  Patent  Office  a  notice  of 
such  his  intention. 

II.  Such  notice  shall  state  the  nature  of  the  decision  appealed 
against,  and  whether  the  appeal  is  from  the  whole,  or  part  only, 
and  if  so,  what  part  of  such  decision. 

III.  A  copy  of  such  notice  of  intention  to  appeal  shall  be  sent 
by  the  party  so  intending  to  appeal  to  the  law  officer's  clerk  at 
room  549,  Royal  Courts  of  Justice,  London  ;  and  when  there  has 
been  an  opposition  before  the  Comptroller,  to  the  opponent  or 
opponents  ;  and  when  the  Comptroller  has  refused  to  seal  a  patent 
on  the  ground  that  a  previous  application  for  a  patent  for  the 
same  invention  is  pending,  to  the  prior  applicant 

IV.  Upon  notice  of  appeal  being  filed,  the  Comptroller  shall 
forthwith  transmit  to  the  law  officer's  clerk  all  the  papers  relating 
to  the  matter  of  the  application  in  respect  of  which  such  appeal 
is  made. 

V.  No  appeal  shall  be  entertained  of  which  notice  is  not  given 
within  14  days  from  the  date  of  the  decision  appealed  against,  or 
such  further  time  as  the  Comptroller  may  allow,  except  by  special 
leave  upon  application  to  the  law  officer. 

VI.  Seven  days'  notice,  at  least,  of  the  time  and  place  ap- 
pointed for  the  hearing  of  any  appeal,  shall  be  given  by  the  law 
officer's  clerk,  unless  special  leave  be  given  by  the  law  officer  that 
any  shorter  notice  be  given. 

VII.  Such  notice  shall  in  all  cases  be  given  to  the  Comp- 
troller and  the  appellant;  and,  when  there  has  been  an  oppo- 
sition before  the  Comptroller,  to  the  opponent  or  opponents  ;  and 
when  the  Comptroller  has  refused  to  seal  a  patent  on  the  ground 
that  an  application  for  a  patent  for  the  same  invention  is  pending, 
to  the  prior  applicant. 

VIII.  The  evidence  ueM  on  appeal  to  the  law  officer  shall  be 


LAW   OFFICERS  KULES,    1888  407 

the  same  as  that  used  at  the  hearing  before  the  Comptroller  ;  and 
no  further  evidence  shall  be  given,  save  as  to  matters  which  have 
occurred  or  come  to  the  knowledge  of  either  party,  after  the  date 
of  the  decision  appealed  against,  except  with  the  leave  of  the  law 
officer  upon  application  for  that  purpose. 

IX.  The  law  officer  shall,  at  the  request  of  either  party,  order 
the  attendance  at  the  hearing  on  appeal,  for  the  purpose  of  being 
cross-examined,  of  any  person  who  has  made  a  declaration  in 
the  matter  to  which  the  appeal  relates,  unless  in  the  opinion  of 
the  law  officer  there  is  good  ground  for  not  making  such  order. 

X.  Any  person  requiring  the  attendance  of  a  witness  for  cross- 
examination  shall   tender  to  the  witness  whose   attendance  is 
required  a  reasonable  sum  for  conduct-money. 

XI.  Where  the  law  officer  orders  that  costs  shall  be  paid  by 
any  party  to  another,  he  may  fix  the  amount  of  such  costs,  and 
if  he  shall  not  think  fit  to  fix  the  amount  thereof  he  shall  direct  by 
whom  and  in  what  manner  the  amount  of  such  costs  shall  be 
ascertained. 

XII.  If  any  costs  so  ordered  to  be  paid  be  not  paid  within  14 
days  after  the  amount  thereof  has  been  so  fixed  or  ascertained, 
or  such  shorter  period  as  shall  be  directed  by  the  law  officer,  the 
party  to  whom  such  costs  are  to  be  paid  may  apply  to  the  law  officer 
for  an  order  for  payment  under  the  provisions  of  section  38  of  the 
Act. 

XIII.  All  documentary  evidence  required,  or  allowed  by  the 
law  officer  to  be  filed,  shall  be  subject  to  the  same  regulations., 
in  all  respects,  as  apply  to  the  procedure  before  the  Comptroller, 
and  shall  be  filed  in  the  Patent  Office,  unless  the  law  officer  shall 
order  to  the  contrary 

XIV.  Any  notice  or  other  document  required  to  be  given  to 
the  law  officer's  clerk,  under  these  Kules,  may  be  sent  by  a  pre- 
paid letter  through  the  post. 

HENRY  JAMES,  A.G. 
FAERER  HERSCHELL,   S.G. 

[Not  dated,  but  issued  in  1888.] 


40* 


PRIVY    <<>r\VlL. 
RULES  IN  i  '.\rr.\r  <  HE 


S      TO    BE     OBSEKVKI)       IN       IV  <  ,8      BP.FORE 

JUDICIAL    COMMITTEE   OF    THK    Pi:n\     < 

THE    ACT   OF   THK    flTH    <fc    f»TH    WM.    IV.,  C.  88.' 

Rule  I.  —  Relates  to  proceedings  for  the  confirmation  of 
patents  under  the  second  section  of  the  repealed  Statute,  which 
has  not  been  re-enacted. 

Rule  II.  —  A  party  intending  to  apply  by  petition,  under 
section  4  of  the  said  Act  [s<  :  Patents  Act,  1883],  shall, 

in  the  advertisements  directed  to  be  published  by  the  said  section, 
give  notice  of  the  day  on  which  lie  intends  to  apply  for  a  time  to 
be  fixed  for  hearing  the  matter  of  his  petition  (which  day  shall 
not  be  less  than  four  weeks  from  the  date  of  the  publication  of 
the  last  of  the  advertisements  to  be  inserted  in  the  '  London 
Gazette  '),  and  that  on  or  before  such  day  caveats  must  be 
entered  ;  and  any  person  intending  to  enter  a  caveat  shall  enter 
the  same  at  the  Council  Office,  on  or  before  such  day  so  named 
in  the  said  adver  :<1  having  entered  such  caveat, 

shall  be  entitled  to  have  from  the  petitioner  four  weeks'  notice 
of  the  time  appointed  for  the  hearing. 

1  Although  more  than  six  years  have  elapsed  since  the  Patents  Act  of 
1888  was  passed,  the  Privy  Council  has  not  yet  issued  a  new  set  of  roles  in 
regard  to  applications  for  the  extension  of  patents.  The  rules  in  use  were 
framed  under  a  repealed  Act  of  Parliament  and  for  the  purpose  of  meeting 
the  requirements  of  that  Act.  Though  more  or  less  obsolete,  they  are  kept 
alive  by  the  operation  of  the  sixth  subsect.  of  the  twenty-fifth  sect,  of  the 
Patents  Act  of  1883  until  new  rules  are  issued,  as  contemplated  by  the  same 

-  The  fourth  section  of  the  5  and  0  Wm  IV.  c.  83  required  the  applicant 
to  advertise  his  intention  to  apply  for  a  prolongation  three  times  in  the 
London  Gazette  and  in  three  London  papers,  and  three  times  in  some 
country  paper  published  in  the  town  where  or  near  to  which  he  carried  on 
any  manufacture  of  anything  made  according  to  his  specification,  or  near 
to  or  in  which  lie  resided  in  case  he  carried  on  no  such  manufacture, 
or  published  in  the  county  where  he  carried  on  such  manufacture  or 


PRIVY  COUNCIL  RULES  409 

Rule  III. — Petitions  under  section  4  of  the  said  Act  [sect. 
25  of  Patents  Act,  1883]  must  be  presented  within  one  week  from 
the  insertion  of  the  last  of  the  advertisements  required  to  be 
published  in  the  '  London  Gazette.' 

Rule  IV. — All  petitions  must  be  accompanied  with  affidavits 
of  advertisements  having  been  inserted  according  to  the  provi- 
sions of  section  4  of  the  said  Act  [sect.  25  subs.  1  of  Patents 
Act,  1883]  and  the  1st  and  2nd  of  these  Rules,  and  the  matters 
in  such  affidavits  may  be  disputed  by  the  parties  opposing  upon 
the  hearing  of  the  petitions. 

Rule  V. — All  persons  entering  caveats  under  section  4  of  the 
said  Act  [sect.  25  subs.  2  of  Patents  Act,  1883]  and  all  parties 
to  any  former  suit  or  action  touching  letters  patent,  in  respect  of 
which  petitions  shall  have  been  presented  under  section  2  of  the 
said  Act,  and  all  persons  lodging  notices  of  opposition  under  the 
1st  of  these  Rules,  shall  respectively  be  entitled  to  be  served  with 
copies  of  petitions  presented  under  the  said  sections,  and  no 
application  to  fix  a  time  for  hearing  shall  be  made  without  affi- 
davit of  such  service. 

Rule  VI. — All  parties  served  with  petitions  shall  lodge  at  the 
Council  Office,  within  a  fortnight  after  such  service,  notice  of  the 
grounds  of  their  objections  to  the  granting  of  the  prayers  of  such 
petitions. 

Rule  VII. — Parties  may  have  copies  of  all  papers  lodged 
in  respect  of  any  application  under  the  said  Act,  at  their  own 
expense. 

Rule  VIII. — The  Registrar  of  the  Privy  Council,  or  other 
officer  to  whom  it  may  be  referred  to  tax  the  costs  incurred  in 
the  matter  of  any  petition  presented  under  the  said  Act,  shall 
allow  or  disallow,  in  his  discretion,  all  pavments  made  to  per- 
sons of  science  or  skill  examined  as  witnesses  to  matters  of 
opinion  chiefly. 

Rule  IX. — A  party  applying  for  an  extension  of  a  patent 
under  section  4  of  the  said  Act  [sect.  25  of  Patents  Act,  1883] 
must  lodge  at  the  Council  Office  six  printed  copies  of  the  speci- 
fication, and  also  four  copies  of  the  balance-sheet  of  expenditure 

where  he  lived  in  case  there  should  not  be  any  paper  published  in  such 
town. 

In  Derosne's  Patent  (4  Moo.  P.  C.  416,  S.  C.  2  W.  P.  C.  2)  it  was  held 
that  when  the  petitioner  resided  abroad  and  had  no  manufactory  in 
England,  he  would  sufficiently  comply  with  these  directions  if  he  inserted 
advertisements  in  the  newspapers  published  in  the  towns  or  county  where 
his  licensees  were  resident. 


410  I  law   COUNCIL  RULES 

and  receipts  relating  to  the  patent  in  question,  which  account* 
are  to  be  proved  on  oath  before  the  Lords  of  the  Committee  at 
the  hearing.  In  the  event  of  the  applicant's  specification  not 
having  been  printed,  and  if  the  expense  of  making  six  copies  of 
any  drawing  therein  contained  or  referred  to  would  be  consider- 
able, the  lodging  of  two  copies  only  of  such  specification  and 
drawing  will  be  deemed  sufficient. 

All  copies  mentioned  in  this  Rule  must  be  lodged  not  less 
than  one  week  before  the  day  fixed  for  hearing  the  applica- 
tion. 

The  Judicial  Committee  will  hear  the  Attorney-General,  or 
other  Counsel,  on  behalf  of  the  Crown,  against  granting  any  ap- 
plication made  under  either  the  second  or  fourth  section  of  the 
said  Act  [sect.  25  of  Patents  Act,  1888]  in  case  it  shall  be  thought 
fit  to  oppose  the  same  on  such  behalf. 


411 


PATENTS,  DESIGNS,  AND   TRADE  MARKS 
ACT,   1888. 

REGISTER  OF  PATENT  AGENTS  EULES,  1889. 

For  the  purpose  of  giving  effect  to  the  provisions  of  the 
Patents,  Designs,  and  Trade  Marks  Act,  1888,  relating  to  the 
registration  of  patent  agents,  the  Board  of  Trade,  by  virtue  of 
the  provisions  of  the  said  Act,  hereby  make  the  following 
Rules : — 

1.  A  Register  shall  be  kept  by  the  Institute  of  Patent  Agents,   Register  to 
subject  to  the  provisions  of  these  Rules  and  to  the  Orders  of  the 

Board  of  Trade,  for  the  registration  of  patent  agents  in  pursuance 
of  the  Act. 

2.  The  Register  shall  contain  in  one  list  all  patent  agents  Contents  of 
who  are  registered  under  the  Act  and  these  Rules. 

Such  list  shall  be  made  out  alphabetically,  according  to  the 
surnames  of  the  registered  persons,  and  shall  also  contain  the 
full  name  of  each  registered  person,  with  his  address,  the  date  of 
registration,  and  a  mention  of  any  honours,  memberships,  or 
other  additions  to  the  name  of  the  registered  person  which  the 
Council  of  the  Institute  may  consider  worthy  of  mention  in  the 
Register.  The  Register  shall  be  in  the  Form  1  in  Appendix  A., 
with  such  variations  as  may  be  required. 

3.  The  Institute  shall  cause  a  correct  copy  of  the  Register  to  Printed 
be,  once  every  year,  printed,  under  their  direction,  and  published  pubHsheV'9 
and  placed  on  sale.     Such  correct  copy  shall,  in  the  year  1889,  a"!jutoUbe 
be  printed  and  published  at  as  early  a  date  as  is  possible,  and  contents"! 
in   every   year  subsequent  to   the   year   1889  shall  be  printed  Register. 
and  published   on  the  31st   day  of  January.     A    copy  of  the 
Register  for  the  time  being  purported  to  be  so  printed  and  pub- 
lished shall  be   admissible  as  evidence  of  all  matters  stated 
therein,  and   the   absence  of   the  name   of   any  person  from 

the  Register  shall  be  evidence,  until  the  contrary  is  made 
to  appear,  that  such  person  is  not  registered  in  pursuance  of  the 
Act. 

4.  The  Institute  shall  appoint  a  Registrar,  who  shall  keep  Registrar. 


412 


PATENT  AGJ  .13,   Ift8» 


IUfftatfmil.>ii 
of  per*m« 

«!...  £  '.• 

•CMtta  prior 
tothepiuM- 

•    -• 


Fliwl  qiull- 

I.Miik-  rxmni- 
iMUiim  for 
registration. 


!'• 
•  •  : 

M&tanU, 
•olid  ton 

ii.M  ||  • 

agent*,  from 

ITrli: 

examination. 


Qnalifioa- 
ttoniof 
ptrton* 
general!  T  for 
Nflftntion. 


the  Register  in  accordance  v,  ith  tin-  provigions  of  the  Act  and 
Unit's,  and,  subject  th-  '1  art  under  the  directions 

of  the  Institute  and  the  Board  of  Trade. 

A  person  who  is  desirous  of  being  registered  in  pursuance 
of  the  Act  on  the  ground  that  prior  to  the  passing  of  the  Act  In- 
had  been  bond  fide  practising  as  a  patent  agent,  -in  II  produce  or 
ii.niMiiit  to  the  Hoard  of  Trade  a  statutory  declaration  it 
I'.. mi  -J  in  Appendix  A.;  provided  that  the  Board  of  Trade  may 
in  any  case  in  which  they  shall  think  fit,  require  further  or  « 
proof  that  the  person  had  prior  to  the  passing  of  the  Act  been 
Itondfiile  practising  as  a  patent  agent.    Upon  the  n  <••  -ipt  of  -u.-h 
statutory  declaration  or  of  such  further  or  other  proof  to  tln-ir 
iction   as  the  case  may  be,   tli.    Hoard  of  Trade  shall 
transmit  to  the  Registrar  a  certificate  that  the  person  tL 
named  is  entitled  to  be  registered  in  pursuance  of  the  Act,  and 
the  Registrar  shall  on  the  receipt  of  such  certificate  cause  the 
name  of  such  person  to  be  entered  in  the  Register. 

•  '-.  Subject  to  the  provisions  of  the  Act  in  favour  of  « 
person  who  proves  to  the  satisfaction  of  the  Board  of  Trade  that 
prior  to  the  passing  of  the  Act  he  had  been  !><>n>i  fidt  practising 
as  a  patent  agent,  no  person  shall  be  entitled  to  be  registered  as 
a  patent  agent  unless  he  has  passed,  and  produces  or  transmits 
to  the  Registrar  a  certificate  nnd.-r  the  seal  of  the  Institute  that 
he  has  passed,  such  final  examination  as  to  his  knowledge  of 
paunt  law  and  practice  and  of  the  duties  of  a  patent  agent  as 
tlu  Institute  shall  from  time  to  time  prescribe. 

7.  Any  person  who  has  been  for  at  least  seven  consecutive 
continuously  engaged  as  a  pupil  or  assistant  to  one  or  more 

•ered  patent  agents,  and  any  person  for  the  time  being 
entitled  to  practise  as  a  Solicitor  of  the  Supreme  Court  of 
Judicature  in  England  or  Ireland,  or  as  a  law  agent  before  the 
Court  of  Session  in  Scotland,  shall  he  entitled  to  be  registered 
without  passing  any  examination  other  than  the  final  examination 
provided  for  in  the  last  preceding  Rule.  Th»  Registrar  shall 
before  registering  the  name  of  any  such  person  as  a  patent  agent 
(in  addition  to  the  final  examination  certificate)  require  proof 
satisfactory  to  the  Registrar  that  such  person  has  been  for  at 
least  seven  consecutive  years  continuously  engaged  as  such 
pupil  or  assistant,  or  is  entitled  to  practise  as  such  Solicitor  or 
Law  Agent. 

8.  Any  person  who  is  not  qualified  under  Rule  7  must,  in 
order  to  be  entitled  to  present  himself  for  the  final  qualifying 
examination,  be — 


PATENT   AGENTS   RULES,    1889  413 

A  person  \vlio  lias  passed  one  of  the  preliminary  examinations 
mentioned  in  Appendix  B.,  or  such  other  examination 
as  the  Institute  shall,  with  the  approval  of  the  Board 
of  Trade,  by  regulation  prescribe. 

9.  The  Institute  shall  hold  at  least  once  in  the  year,  com-  rinai  quaii- 
mencing  with  the  first  day  of  July  1889,  and  in  every  other  sue-  imtlon^tobe 
ceeding  year,  a  final  qualifying  examination,  which  shall  be  the   Institute!16 
final  qualifying  examination  required  under  Rules  6  and  7  ;  and 
the  Institute  shall,  subject  to  these  Eules,  have  the  entire  manage- 
ment and  control  of  all  such  examinations,  and  may  from  time 
to  time  make  regulations  with  respect  to  all  or  any  of  the  follow- 
ing matters,  that  is  to  say, 

(a)  The  subjects  for  and  the  mode  of  conducting  the  exami- 
nation of  candidates ; 

(&)  The  times  and  places  of  the  examinations,  and  the  notices 
to  be  given  of  examinations  ; 

(c)  The  certificates  to  be  given  to  persons  of  their  having 

passed  the  examinations  ; 

(d)  The   appointment  and  removal  of  examiners,  and   the 

remuneration,  by  fees  or  otherwise,  of  the  examiners 
so  appointed ;  and 

(e)  Any  other  matter  or  thing  as  to  which  the  Institute  may 

think  it  necessary  to  make  regulations  for  the  purpose 
of  carrying  out  this  Rule. 

10.  The   Registrar   shall   from  time  to  time  insert   in  the  corrections 
Register  any  alteration  which  may  come  to  his  knowledge  in  the  ."na*"1163 
name  or  address  of  any  person  registered.  toaster*  "* 

11.  The  Registrar  shall  erase  from  the  Register  the  name  of  Erasure  of 
any  registered  person  who  is  dead.  Sensed* 

12.  The  Registrar  may  erase  from  the  Register  the  name  of  Persous- 
any  registered  person  who  has  ceased  to  practise  as  a  patent  uameJof0 
agent,  but  not  (save  as  hereinafter  provided)  without  the  consent  hav^clase'd* 
of  that  person.     For  the  purposes  of  this  Rule  the  Registrar  may  to  Practise- 
send  by  post  to  a  registered  person  to  his  registered  address  a 

notice  inquiring  whether  or  not  he  has  ceased  to  practise  or  has 
changed  his  residence,  and  if  the  Registrar  does  not  within  three 
months  alter  sending  the  notice  receive  an  answer  thereto  from 
the  said  person,  he  may,  within  fourteen  days  after  the  expiration 
of  the  three  months,  send  him  by  post  to  his  registered  address 
another  notice  referring  to  the  first  notice,  and  stating  that  no 
answer  has  been  received  by  the  Registrar ;  and  if  the  Registrar 
either  before  the  second  notice  is  sent  receives  the  first  notice 
back  from  the  dead  letter  office  of  the  Postmaster-General,  or 


4)4 


PATKJiT  AGENTS  RULES,  18M 


i.          ' 


MS 

&.  : 


foe*, 


ful  iv: 


receives  the  second  notice  back  from  that  office,  or  does  not 
within  three  months  after  tending  the  second  notice  receive  any 
answer  thereto  from  the  said  person,  thai  person  shall,  for  the 
purposes  of  this  Rule,  be  deemed  to  have  ceased  to  practise,  and 
his  name  maybe  erased  accordingly. 

If  any  registered  person  shall  not,  within  one  month 
from  the  day  on  \\hi.-li  his  annual  registration  fee  becomes 
payable,  pay  such  fee>  the  Registrar  may  send  to  such  registered 
person  to  his  registered  address  a  notice  requiring  him,  on  or 
before  a  day  to  be  named  in  the  notice,  to  pay  his  annual  regis- 
tration fee  ;  and  if  such  registered  patent  agent  shall  not  within 
one  month  from  the  day  named  in  such  notice  pay  the  regis- 
t  ration  fee  so  due  from  him,  the  Registrar  may  erase  his  name 
from  the  Register  :  Provided  that  the  name  of  a  person  erased 
from  the  Register  under  this  rule  may  be  restored  to  the  Register 
l>y  direction  of  the  Institute  or  the  Board  of  Trade  on  payment 
Ity  such  person  of  the  fee  or  fees  due  from  him,  together  with 
such  further  sum  of  money,  not  exceeding  in  amount  the  annual 
registration  fee,  as  the  Institute  or  the  Board  of  Trade  (as  the 
case  may  be)  may  in  each  particular  case  direct. 

14.  In  the  execution  of  his  duties  the  Registrar  shall,  subject 
to  these  Rules,  in  each  case  act  on  such  evidence  as  appears  to 
him  sufficient. 

1  •"».  ''l»e  Board  of  Trade  may  order  the  Registrar  to  erase  from 
t"e  Register  any  entry  therein  which  is  proved  to  their  satisfac- 
tjon  t0  have  been  incorrectly  or  fraudulently  inserted. 

1  (I.  If  any  registered  person  shall  be  convicted  in  her  Majesty's 
dominions  or  elsewhere  of  an  offence  which,  if  committed  in 
I'-n.^'land,  would  be  a  felony  or  misdemeanor,  or,  after  dm-  inquiry, 
is  proved  to  the  satisfaction  of  the  Board  of  Trade  to  have  been 
guilty  of  disgraceful  professional  conduct,  or,  having  been  entitled 
to  practise  as  a  Solicitor  or  Law  Agent,  shall  have  ceased  to  be  so 
entitled,  the  Board  of  Trade  may  order  the  Registrar  to  erase 
Irom  the  Register  the  name  of  such  person  :  Provided  that  no 
person  shall  be  adjudged  by  the  Board  of  Trade  to  have  been 
guilty  of  disgraceful  professional  conduct  unless  such  person  has 
received  notice  of,  and  had  an  apportunity  of  defending  himself 
from,  any  charge  brought  against  him. 

17.  —  (1)  Where  the  Board  of  Trade  direct  the  erasure  from 
the  Register  of  a  name  of  any  person,  or  of  any  other  entry,  the 
name  of  the  person  or  the  entry  shall  not  be  again  entered  in  the 
Register,  except  by  order  of  the  Board  of  Trade. 

(2.)  The  Board  of  Trade  may  in  any  case  in  which  they  think 


PATENT  AGENTS  EULES,    1880  415 

fit  restore  to  the  Eegister  any  name  or  entry  erased  therefrom 
either  without  fee,  or  on  payment  of  such  fee,  not  exceeding  the 
registration  fee,  as  the  Board  of  Trade  may  from  time  to  time 
fix,  and  the  Registrar  shall  restore  the  name  accordingly. 

(3.)  The  name  of  any  person  erased  from  the  Register  at  the 
request  or  with  the  consent  of  such  person  shall,  unless  it  might, 
if  not  so  erased,  have  been  erased  by  order  of  the  Board  of  Trade, 
be  restored  to  the  Register  by  the  Registrar  on  his  application 
and  on  payment  of  such  fee,  not  exceeding  the  registration  fee, 
as  the  Institute  shall  from  time  to  time  fix. 

18.  For  the  purpose  of  exercising  in  any  case  the  powers,  inquiry  by 
of  erasing  from  and  of  restoring  to  the  Register  the  name  of  a  Trade  before 
person,  or  an  entry,  the  Board  of  Trade  may  appoint  a  com-  ^1^^^ 
mittee  consisting  of  such  persons  as  they  shall  think  fit.     Every  K^ter. 
application  to  the  Board  of  Trade  for  the  erasure  from,  or  restora- 
tion to,  the  Register  of  the  name  of  any  patent  agent  shall  be  re- 
ferred for  hearing  and  inquiry  to   the   committee,  who   shall 

report  thereon  to  the  Board  of  Trade,  and  a  report  of  the  committee 
shall  be  conclusive  as  to  the  facts  for  the  purpose  of  the  exercise 
of  the  said  powers  by  the  Board  of  Trade. 

19.  Any  person  aggrieved  by  any  order,  direction,  or  refusal  Appeal  to 
of  the  Institute  or  Registrar  may  appeal  to  the  Board  of  Trade.      Trade. °£ 

20.  A  person  who  intends  to  appeal  to  the  Board  of  Trade   Notice  of 
under  these  Rules  (in  these  Rules  referred  to  as  the  appellant) 

shall  within  14  days  from  the  date  of  the  making  or  giving  of 
the  order,  direction,  or  refusal  complained  of,  leave  at  the  office 
of  the  Institute  a  notice  in  writing  signed  by  him  of  such  his 
intention. 

21.  The  notice  of  intention  to  appeal  shall  be  accompanied  by  Case  on 
a  statement  in  writing  of  the  grounds  of  the  appeal,  and  of  the 

case  of  the  appellant  in  support  thereof. 

22.  The  appellant  shall  also  immediately  after  leaving  his  Transmis- 
notice  of  appeal  at  the  Institute  send  by  post  a  copy  thereof,  with  notice  of 
a  copy  of  the  appellant's  case  in  support  thereof,  addressed  to  Board1  o? 
the   Secretary  of   the  Board  of  Trade,  7  Whitehall  Gardens,  Trade- 
London. 

23.  The  Board  of  Trade  may  thereupon  give  such  directions,  Directions 
if  any,  as  they  may  think  fit  for  the  purpose  of  the  hearing  of  of  appeaf.mg 
the  appeal. 

24.  Seven  days'  notice,  or  such  shorter  notice  as  the  Board  Notice  of 
of  Trade  may  in  any  particular  case  direct,  of  the  time  and  place  ° 
appointed  for  the  hearing  of  the  appeal  shall  be  given  to  the 
appellant  and  the  Institute  and  the  Registrar. 


416 


1-3,    1889 


A::.r,r.  •     • 
rtffuUtioo*. 


I;. ;-  ••  •  • 
Bnanl  of 

. 


Commence- 
ment. 


•j:>.  The  appeal  i  !..-unl  by  th.  I'n  -«,id«  nt.  a  Secretary, 

or  an  Assistant- Secretary  <>f  ti..-  Hoard  <>f  Trad.  .  and  th«-d«-< 
and   order   thereon  of  id.  nt,    &  .\HsisUnt- 

Secretary,  as  the  case  may  be,  shall  be  the  deci.-ion  of  the  Hoard 
of  Trade  on  MI.  ) i  appeal.  On  theappcal  -u.-h  d«i>i<m  may  be  given 
or  order  made  in  reference  to  the  subjn -t  mat-  appeal  aa 

the  case  may  require. 

The  fees  set  forth  in  Appendix  ('.  :•>  those  Rules  shall  be 
paid  in  respect  of  the  several  matters,  and  at  the  linn  s  and  in 
the  manner  therein  mentioned.     The  Board  of  Trade  may  from 
time  to  time,  by  orders  signed  by  tin   Secretary  of  the  Bon 
Trade,  alter  any  of,  or  add  to,  the  fees  payable  und.  r  these  Rules. 

•11.  Any  regulation  made  hy  :  -e  Roles 

may  be  altered  or  revoked  by  a  subsequent  regulation 
of  all  regulations  made  by  the  Institute  under  1.  s  -hall, 

within  tv.  i  days  of  the  date  of  their  being  made,  be 

transmitted  to  the  Board  of  Trade,  and  if  within  t\v. 
days  after  a  copy  of  any  regulation  has  been  so  transmitted,  the 
Hoard  of  Trade  hy  an  order  signify  their  disapproval  thereof,  such 
regulation  shall  be  of  no  force  or  effect ;  and  if,  after  any  regula- 
tion under  these  Rules  has  come  into  force,  the  Board  of  Trad.- 
signify  in  manner  aforesaid  their  disapproval  thereof,  such  regula- 
tion shall  immediately  cease  to  be  of  any  force  or  effect. 

•Js.  The    Institute   shall  once  every  year  in  the   month   of 

:abir  transmit  to  the  Board  of  Trad-  a  ivp.»rt  statin 
number  of  applications  for  registration  which  have  been  mad*  in 
tin-  preceding  \. -ar,  the  nature  and  results  of  the  final  examina- 
tions which  have  been  held,  and  the  amount  of  fees  received  by 
the  Institute  under  these  Rules,  and  such  other  matters  in  r<  • 
lation  to  the  provisions  of  these  Rules,  as  the  Board  of  T 
may  from  time  to  time,  by  notice  signed  by  the  Secretary  of  the 
Board  of  Trade  and  addressed  to  the  Institute,  require. 

•J'.'.  In  these  Rules,  unless  the  context  otherwise  requires — 
'The  Act'  means  the  Patents,   Designs,  and  Trade 
Marks  Act,  1888. 

'  The  Institute '  means  the  Institute  of  Patent  Agents  act- 
ing through  the  Council  for  the  time  being. 

4  The  Registrar  '  means  the  Registrar  appointed  under  ti 
Rules. 

'  Registered  patent  agent  '  means  any  agent  for  obtaining 
patents  in  the  United  Kingdom  whose  name  is  registered 
under  the  Act  and  these  Rules. 

80.  These  Rules  shall  commence  and  come  into  operation  on 
the  12th  day  of  June  1889,  but  at  any  time  after  the  making 


PATENT   AGENTS   RULES,   1889 


417 


thereof  any  appointment  or  regulations  may  be  made  and  things 
done  for  the  purpose  of  bringing  these  Eules  into  operation  on 
the  said  day. 

81.  These  Eules  may  be  cited  as  the  Eegister  of  Patent 
Agents  Eules,  1889. 

By  the  Board  of  Trade, 

COUETENAY   BOYLE, 
Assistant- Secretary,  Eailway  Department. 

The  llth  day  of  June,  1889. 


APPENDIX  A. 

Form  i. 
FORM  OF  EEGISTER. 


Name. 

Designation. 

Address. 

Date  of 
Registration. 

Form  2. 

FORM  OF  STATUTORY  DECLARATION. 
Register  of  Patent  Agents  Eules,  1889. 

I,  A.B.  [insert  full  name,  and  in  the  case  of  a  member  of  a  firm 
add,  '  a  member  of  the  firm  of  '  ],  of 

,  in  the  county  of  ,  Patent  Agent, 

do  solemnly  and  sincerely  declare  as  follows  : — 

1.  That  prior  to  the  24th  December,  1888,  I  had  been  bond  fide 
practising  in  the  United  Kingdom  as  a  patent  agent. 

2.  That  I   acted  as  patent   agent    in  obtaining    the    folio  wing 
patents  : — 

[Give  the  official  numbers  and  dates  of  some  patents  for  the 
United  Kingdom  in  the  obtaining  of  which  the  declarant  acted  as 
patent  agent^] 

3.  That  I  desire  to  be  registered  as  a  patent  agent  in  pursuance  of 
the  said  Act. 

And  I  make  this  solemn  declaration  conscientiously  believing  the 
same  to  be  true  and  by  virtue  of  the  provisions  of  the  Statutory  Decla- 
rations Act,  1835. 

Declared  at 

£  E 


UTKNMX  B. 

I'VKII.  fLABS   OF    PRKUXIXAKY 

1.  The  Matriculation  Examination  at  any  University  in  England 
Scotland,  or  Ireland. 

2.  The  Oxford  or  Cambridge  Middle  CUu»  Senior  Local  Examina- 
tions. 

8.  The  Examinations  of  the  Civil  Service  Commissioners  for  a  . 
sion  to  the  Civil  Service.1 


AITKNMX    C. 

r>  t  -. 


Nature  of  Fee. 

When  U>  be  pai<L 

To  when  to  be 

A             • 

£   *.  4. 

For  registration  of  name  of 

On  application 

To  the  Regis- 

patent   agent    who    had 
been                   in  practice 

and     before 
registration. 

trar    at  the 

Institute. 

prior  to  the  passing  of  the 

Act. 

For  registration  of  name  of 

Do.        do. 

Do.        do. 

550 

any  person  other  than  as 

above. 

Annual  fee  to  be  paid  by 

On    or    before 

Do.        do. 

a  :i    o 

every    registered    patent 

'.ember  80 

agent 

of  each  year. 

in  respect  of 

the  year  com- 

m  e  n  c  i  n  g 

January    1st 

following. 

On  entry  of  a  candidate  for     At  time  «•:' 

Do.        do. 

220 

the  nnnl  qualifying  exa- 

teringname. 

mination. 

1  In  pursuance  of  Rale  8  the  Institute  has,  with  the  approval  of  the 
Board  of  Trade,  prescribed  the  following  additional  eliminations : — 
i.  The  First  Public  Examination  before  Moderators  at  Oxford. 
5.  The  Previous  Examination  at  Cambridge. 

The  Examination  in  Arts  for  the  second  year  at  Durham. 

7.  The  Examination  for  First  Class  Certificate  of  the  College  of  Pre- 
ceptors (40  A-  41  Viet.  c.  25,  sec.  10). 

8.  An  examination  resulting  in  the  obtaining  of  a  Whitworth  Scholarship. 


APPENDIX 


PART   II 
PATENT  LAWS   OF  FOREIGN  COUNTRIES 


AMERICA,  U.  STATES 

FINLAND 

PARAGUAY 

OF 

FRANCE 

PERU 

ARGENTINE  REPUB- 

GERMANY 

PORTUGAL 

LIC 

GUATEMALA 

RUSSIA 

AUSTRIA 

HAWAII 

SALVADOR 

BELGIUM 

HONDURAS 

SPAIN 

BOLIVIA 

ITALY 

SWEDEN 

BRAZIL 

JAPAN 

SWITZERLAND 

CHILI 

LIBERIA 

TRANSVAAL 

COLOMBIA 

LUXEMBOURG 

TUNIS 

CONGO  FREE  STATE 

MEXICO 

TURKEY 

COSTA  RICA 

NICARAGUA 

URUGUAY 

DENMARK 

NORWAY 

VENEZUELA 

ECUADOR 

ORANGE  FREE  STATE 

PATENT  LAWS  OF  BRITISH  COLONIES  AND  POSSESSIONS 

ABROAD 


BAHAMA  ISLANDS 
BARBADOES 
BORNEO,       BRITISH 

NORTH 

BRITISH  GUIANA 
BRITISH  HONDURAS 
CANADA 

CAPE  OF  GOOD  HOPE 
CEYLON 
FIJI 


HONG  KONG 

INDIA 

JAMAICA 

LEEWARD  ISLANDS 

MALTA 

MAURITIUS 

NATAL 

NEWFOUNDLAND 

N.  S.  WALES 

NEW  ZEALAND 


QUEENSLAND 

ST.  HELENA 

S.  AUSTRALIA 

STRAITS  SETTLE- 
MENTS 

TASMANIA 

TRINIDAD 

VICTORIA 

WESTERN  AUSTRA- 
LIA 


xx2 


PAET  II 


FOREIGN  PATENTS, 

THE  inventor  who  is  not  satisfied  with  the  protection  afforled 
him  at  home  should  consider  well  the  countries  in  which  his  in- 
vention is  likely  to  come  into  use,  and  also  his  own  personal 
prospects  of  pushing  his  invention  abroad,  before  incurring  a  large 
outlay  in  applications  for  foreign  patents. 

There  are  many  rules  with  respect  to  foreign  patents  which 
differ  from  our  British  regulations :  for  instance,  the  patent  for 
an  imported  invention  frequently  expires  with  the  determination 
of  the  grant  in  that  country  from  which  the  invention  has  been 
imported,  and  the  inventions  patented  must  be  put  into  practice 
within  a  certain  definite  period  from  the  grant,  and  must  be  con- 
tinued in  use  year  by  year  during  the  term.  Annual  and  other 
duties  have  to  be  paid,  and  in  some  states  the  patented  articles 
must  be  made  in  the  country  itself,  and  cannot  be  imported,  and 
in  some  prior  publication  at  home  is  a  bar  to  obtaining  a  valid 
patent  afterwards. 

The  International  Convention  on  patents  is  printed  on  page 
373  of  this  appendix,  and  it  will  be  found  to  make  the  following 
important  provisions  as  to  patents  taken  out  by  subjects  of  the 
several  states  who  are  parties  to  it.  First,  the  subjects  or 
citizens  of  each  of  the  states  of  the  Union  will  enjoy  in  all  the 
other  states  the  same  advantages  as  regards  patents  that  their 
respective  laws  grant  to  their  own  subjects  or  citizens.  Second, 
any  person  who  has  made  an  application  for  a  patent  in  any  one 
of  the  states  enjoys,  as  regards  the  application  for  a  patent  in 
the  other  states,  a  right  of  priority  for  a  term  of  six  months  from 
the  date  of  the  earliest  application,  a  month  longer  being  allowed 
for  countries  beyond  the  sea.  Third,  the  introduction  by  the 
patentee  into  the  country  where  the  patent  has  been  granted  of 
objects  manufactured  in  any  of  the  other  states  does  not  entail 
forfeiture,  but  the  patentee  must  work  his  patent  in  conformity 


•IL'-'  TED  STATES  OF  AMERICA 

with  tin  laws  of  tlu>  country  into  which  he  introduces  the  patented 
object.    1  'mirth,  tin-  several  states  agree  to  grant  temporary  pro- 
tection to  patentable  inventions  for  articles  appearing  atofli< 
recognised    1 1:1,.  i national    K  \hihitions.     The  states  which   are 
parties  to  this  Convention  are  indicated  by  an  asterisk :  1 1 
•Brazil. 

The  following  summaries  of  Foreign  Patent  Laws  have  been 
carefully  revised  by  patent  agents  and  lawyers  pra*  D  the 

respective  states. 

•  UNITED  STATES  OF  AM 

The  existing  laws  of  patents  in  the  United  States,  comprising 
various  Acts  of  Congress  passed  from  time  to  time,  have  been 
collected  and  embodied  in  the  Revised  Statutes,  approved  Jr. 
1874.    There  is  now  no  difference  in  fees  paid  by  citizens  and 
ners. 

Probably  in  no  country  in  the  world  are  the  rights  of  inventors 
lore  cherished  than  in  the  United  States,  and  the  number  of 
patents  issued  there  annually  fur  exceeds  that  granted  in  any 
>ther  country. 

The  facilities  for  obtaining  patents  have  been  largely  increased 
of  late  years,  and  no  application  for  an  invention  possessing  any 
features  of  novelty  and  utility  is  refused,  if  perseveringly  and  skil- 
fully prosecuted. 

Kvery  original  and  first  inventor,  whether  native  or  foreign, 
may  obtain  a  patent  for  his  invention,  provided  only  it  has  not 
been  in  public  use  or  on  sale  in  the  United  States  for  more  than 
two  years  previously  to  his  application.  The  application  must  be 
in  the  name  of  and  be  executed  by,  the  inventor  himself,  and  must 
be  confined  strictly  to  a  single  invention. 

Patentable  invention  includes  new  and  useful  arts,  new 
machines  and  implements,  m  w  chemical  compounds,  and  new 
manufactures,  but  mere  applications  involving  no  new  results 
cannot  be  patented. 

By  executing  and  recording  in  the  Patent  Office  an  assign- 
ment, the  patent  may  be  issued  to  an  assignee. 

The  petition  to  the  Commissioner  of  Patents  must  be  accom- 
panied by  the  first  fee  of  15  dollars,  a  specification  fully  explaining 
the  nature  of  the  invention  and  the  best  mode  known  to  the  in- 
ventor of  carrying  the  same  into  effect;  drawings,  if  the  invention 
be  susceptible  of  such  illustration,  and  an  oath  in  the  prescribed 
form.  The  requirement  of  a  model  is  now  practically  abolished, 
being  only  insisted  on  in  cases  where,  by  reason  of  its  compli- 


UNITED  STATES  OF  AMERICA  423 

cated  nature,  the  invention  cannot  be  understood  without  such 
aid. 

The  prosecution  of  cases  hefore  the  United  States  Patent  Office 
is  conducted  under  a  complex  system  of  rules,  constantly  revised 
by  the  Secretary  of  the  Interior  and  Commissioner  of  Patents, 
which  renders  such  prosecution  difficult  and  uncertain,  and  re- 
quires the  exercise  of  great  care  and  skill  on  the  part  of  applicants 
and  their  attorneys. 

In  the  order  of  their  filing  applications  are  taken  up  for  ex- 
amination by  one  of  a  corps  of  thirty  skilled  examiners,  each  of 
whom  has  under  him  four  assistants  and  a  number  of  clerks. 
Precedence  is  given  to  applications  for  inventions  that  have  been 
patented  abroad. 

A  thorough  investigation  is  then  conducted  to  ascertain  the 
novelty  of  the  invention  claimed,  the  search  extending  through 
domestic  and  foreign  patents,  and  the  scientific  and  industrial 
publications  of  different  countries  bearing  on  the  invention  under 
examination. 

If  the  invention  is  found  to  be  wholly  or  partly  wanting  in 
novelty,  or  if  the  application  includes  more  than  one  invention, 
or  if  any  formal  defects  are  discovered,  the  application  is  rejected, 
the  reasons  therefor  being  clearly  pointed  out. 

The  application  may  be  again  presented,  either  with  or  without 
amendment,  and  a  reconsideration  obtained.  If  the  applicant  is 
dissatisfied  with  the  final  action  of  the  examiner  he  may  appeal 
upon  the  points  of  disagreement  to  the  Board  of  Examiners-in- 
Chief.  From  their  decision  appeal  lies  to  the  Commissioner  of 
Patents  in  person,  and  from  his  to  the  supreme  court  of  the  dis- 
trict of  Columbia.  For  such  appeals  additional  fees  are  required. 

It  often  happens  that  two  or  more  applicants  before  the 
Patent  Office  claim  the  same  invention,  or  that  an  applicant  claims 
to  be  the  prior  inventor  of  a  thing  already  patented  to  another. 
In  such  case  the  Commissioner  declares  an  interference,  which  is 
a  proceeding  to  determine  which  of  the  rival  claimants  is  in  law 
the  prior  inventor  of  the  thing  in  dispute.  This  question  is  deter- 
mined, from  proofs  taken  in  writing,  in  the  first  instance  by  the 
Examiner  of  Interferences.  Appeals  may  be  taken  the  same  as 
in  uncontested  cases,  except  that  no  appeal  lies  to  the  supreme 
court  of  the  district. 

Provision  is  made  by  law  for  the  reissue  of  a  patent  in  case  of 
an  insufficient  or  defective  specification,  or  where  the  patentee  has 
claimed  more  than  is  new.  Owing  to  abuse  of  this  privilege, 
whereby  patents  have  been  unduly  expanded  and  made  to  cover 


424  iKD  STATES  OF  AMEl 

different  inventions  from  that  originally  patented,  the  court*  have 
of  late  yean  been  very  severe  in  dealing  with  reissued  patents, 
invariably  declaring  invalid  all  those  that  appear  to  have  been 
unwarrantably  broadened  in  scope,  i  issues  are 

now  looked  upon  with  distrust  and  disfavour,  and  it  becomes  of 
great  importance  to  the  inventor  that  his  patent  should  be  taken 
out  in  the  first  instance  in  such  shape  as  to  fully  protect  the 
invention,  thus  avoiding  the  necessity  of  a  reissue. 

The  protection  afforded  by  caveats  is  now  generally  regarded 
as  of  little  importance,  and  is  seldom  sought.  The  protection  is 
only  open  to  « 

All  patents  are  issued  for  a  term  of  seventeen  yean,  but  if 
the  invention  has  been  previously  patented  abroad,  the  patent 
expires  with  the  foreign  patent,  or  if  there  be  more  than  one, 
with  that  having  the  shortest  term.  I'mler  this  provision  an 
m  v. -utor  suffers  great  disadvantage  by  delaying  his  I'nited  States 
application.  The  practice  prevails  in  America,  when  an  invention 
is  to  be  patented  in  several  countries,  to  first  file  the  United 
States  application  and  prosecute  it  to  allowance.  The  day  for 
issue  of  the  patent  can  then  be  definitely  fixed,  and  the  patents 
in  other  countries  are  so  obtained  as  to  bear  the  same  date  with 
the  I'nited  States  patent.  By  this  simultaneous  issue  the 
inventor  may  enjoy  the  full  term  of  all  his  patents.  This  course 
of  proceeding  is  not  generally  pursued  by  foreign  inventors,  who 
naturally  apply  in  the  first  instance  for  the  home  patent  as  being 
of  most  consequence  to  them. 

It  has  been  recently  decided  by  the  Supreme  Court  U.  8.  that 
i  uited  States  patent  continues  in  existence  during  the  whole 
original  term  of  the  foreign  patent,  although  the  foreign  patent 
may  have  lapsed. 

Upon  allowance  of  a  patent  the  final  fee  of  20  dollars  must  be 
paid. 

Applications  not  prosecuted  for  two  years  become  abandoned. 

No  prolongations  of  patents  can  be  obtained  except  by  special 
Act  of  Congress.  Improvements  upon  the  original  invention 
must  be  protected  by  new  patents. 

After  issue  of  the  patent  there  are  no  further  taxes  required, 
and  no  conditions  are  imposed  upon  the  inventor  as  to  working  of 
his  invention. 

As  the  novelty  of  a  patented  invention  has  been  established 
by  the  Commissioner  of  Patents  after  a  searching  investigation, 
the  presumption  of  law  is  that  the  patent  is  valid,  and  the  courts, 
will  so  construe  it  as  to  sustain  it  if  possible. 


ARGENTINE  REPUBLIC  425 

Patents  will,  however,  be  declared  void — 

1.  If  the  specification  was  made  misleading  for  the  purpose 
of  deceiving  the  public. 

2.  If  the  thing  patented  were  really  the  invention  of  another 
than  the  patentee. 

3.  If  the  invention  had  been  patented  or   described  in   a 
printed  publication  before  the  invention  by  the  patentee. 

4.  If  the  invention  had  been  in  public  use  or  on  sale  in  the 
United  States^for  more  than  two  years  previously  to  the  filing  of 
the  application. 

Goods  made  abroad  according  to  the  invention  can  be  im- 
ported into  the  United  States  without  invalidating  the  patent. 

All  articles  made  under  the  patent  must  be  marked '  patented,' 
with  the  date  of  the  patent. 

ARGENTINE  REPUBLIC. 

This  republic  has  established  a  Patent  Office  on  the  model  of 
that  of  the  United  States,  by  a  law  dated  October  11,  1864,  and 
decrees  and  regulations  of  October  10,  1864,  and  November  8, 
1866. 

Patents  are  granted  for  terms  of  five,  ten,  or  fifteen  years  for 
all  new  and  useful  inventions  and  discoveries  excepting  pharma- 
ceutical compositions,  providing  that  such  inventions  or  dis- 
coveries have  not  been  previously  published  in  the  republic. 

Patents  are  granted  to  the  inventor  or  to  the  assignees  of  his 
rights. 

The  Government  fees  on  a  patent  are  80,  200,  or  350  piastres 
(pesos  fuertes],  according  to  its  term  (in  addition  to  sundry  petty 
stamp  duties),  one-half  of  which  amount  has  to  be  paid  at  the 
time  of  the  application,  and  the  remainder  after  the  grant. 

Certificates  of  addition  or  improvement  are  also  granted 
both  to  the  original  patentee  and  to  others.  In  the  former  case 
one-fourth  of  the  fees  required  for  an  original  patent  have  to  be 
paid,  and  in  the  latter  case  one-half  of  the  said  fees. 

Provisional  patents  are  also  granted  for  one  year,  the  payment 
for  which  is  50  piastres.  These  patents  are  renewable  at  the 
expiration  of  each  year. 

Applications  for  patents  are  to  refer  to  a  single  chief  object 
with  its  accessories  and  applications. 

Patents  may  be  assigned.  A  patent  is  invalid  if  the  drawing 
or  specification  is  incorrect  or  incomplete.  It  also  becomes  void 
if  not  worked  within  two  years  from  the  date  of  issue,  or  if  the 
working  has  been  interrupted  for  a  similar  period,  except  by 


AM 

cm- u instances  beyond  control  or  accident.     In   either  case  no 
special  judicial  decree  is  required  to  render  the  patent  null  and 

Proceedings  may  be  taken  for  infringement. 
Articles  made  abroad  according  to  the  patent  can  be  ira- 
ported  into  the  n -puMii-  without  invalidating  the  grant. 

The  patent  law  of  this  empire,  which  has  been  in  force  since 
August  15,  1852,  for  Austria- Hungary  and  the  principality  of 
i  Germany),  has  been  extended  by  additional  decree* 
of  June  27,  1878,  and  December  20,  1879,  to  Bosnia  and  1 ! 
gowina,  and  establishes  the  following  regulations  throughout  the 
cmpi 

Patents  are  not  allowed  for  alimentary  preparations,  bever- 
ages, and  medicines,  nor  for  discover!.  -.  inventions,  or  improve- 
ments which  are  contrary  to  public  health,  public  welfare, 
morality,  or  the  interest  of  the  state.  Scientific  principles  or 
purely  scientific  theories  cannot  be  patented.  With  these  an 
tions,  patents  are  granted  for  every  new  discovery,  invention,  or 
improvement,  having  for  its  object  (a)  a  new  industrial  product, 
new  means  of  producing,  or  (c)  a  new  method  of  producing — 
that  is  to  say,  new  within  the  empire. 

An  invention  is  deenu  <1  new  when  it  has  not  been  put  into 
operation  or  been  made  public  in  the  empire  before  the  appli 
•11  for  the  patent  is  m;i 

Foreigners,  as  well  as  Austrian  subjects,  may  be  patentees ; 
but  with  regard  to  inventions  made  by  foreigners  not  resident 
in  Austria,  patents  are  only  granted  when  a  patent  has  been 
previously  obtained  in  a  foreign  country  for  the  same  object,  and 
then  only  to  the  original  patentee,  or  his  legal  assignee,  during 
the  term  of  his  foreign  patent. 

Two  or  more  inventions  cannot  be  included  in  a  single  patent, 
unless  they  refer  to  the  same  subject-matter,  as  essential  parts  of  it. 

The  petition  for  a  patent  may  be  made  either  by  the  inventor, 
if  he  is  a  resident  of  the  empire,  or  by  his  legal  attorney. 
Foreigners  not  residing  must  have  a  legal  attorney.  It  must 
state  the  exact  title  of  the  invention,  and  the  number  of  years 
for  which  it  is  desired  to  pay  the  patent  tax,  as  the  maximum 
duration  of  all  patents  is  fifteen  years,  provided  the  tax  is  paid  at 
once  for  the  entire  number  of  years  or  by  instalments ;  the  term 
cannot  be  exceeded  except  by  special  imperial  authority. 


AUSTEIA        ,  427 

The  amount  of  Government  tax  is  as  follows  : — For  each  of 
the  first  five  years,  21.  12s.  Qd. ;  sixth  year,  3Z.  18s.  9d. ;  seventh 
year,  41. 12s.  Qd.;  eighth  year,  51. 5s.  Qd.;  ninth  year,  51. 18s.  Qd.; 
tenth  year,  6Z.  lls.  3d.;  eleventh  year,  71.  17s.  Qd. ;  twelfth  year, 
9Z.  3s.  9rf. ;  thirteenth  year,  10Z.  10s.  Qd. ;  fourteenth  year, 
111.  6s.  Qd. ;  fifteenth  year,  13Z.  2s.  6d.,  or  for  the  entire  fifteen 
years,  918  florins  (92Z.).  In  addition  to  these  taxes  there  are  also 
stamps  upon  petitions,  upon  each  sheet  of  the  specification,  draw- 
ings, &c. 

A  description  must  accompany  the  petition,  and  this  must 
contain  a  full,  clear,  and  minute  explanation  of  the  invention 
and  claims,  so  as  to  enable  all  competent  persons  to  manufacture 
the  article  according  to  that  specification  ;  if  drawings,  samples, 
or  models  are  required  for  the  full  comprehension  of  the  descrip- 
tion, they  must  be  supplied  in  duplicates,  one  for  Austria,  one  for 
Hungary. 

A  patentee  is  entitled  to  establish  workshops  or  factories,  to 
employ  the  workpeople  he  may  find  requisite  to  carry  out  the 
object  of  the  patent  to  its  fullest  extent,  and  consequently  to 
form  establishments,  stores,  and  warehouses  for  the  manu- 
facture, within  the  entire  empire,  under  the  existing  legal  pre- 
scriptions. He  may  sell  and  dispose  of  the  proceeds,  and  license 
others  to  use  his  invention,  take  partners,  and  dispose  of  his 
patent  right  by  assignment  or  in  any  way  whatsoever. 

A  patent  will  be  cancelled  on  proof  that  the  legal  requisites 
for  a  patent  do  not  exist,  or  that  the  description  does  not  fulfil 
the  prescribed  conditions,  or  that  the  invention  is  not  new,  or, 
being  an  importation  from  abroad,  that  the  patentee  is  not  the  real 
owner  of  the  foreign  patent,  or  that  the  object  of  the  patent  is 
contrary  to  law,  or  to  the  health  or  morality  of  the  public,  or  the 
interest  of  the  state. 

A  patent  will  expire  not  only  by  efflux  of  the  term,  but  also 
in  case  the  patentee  has  not  begun  to  work  his  invention  in  the 
empire  with  native  materials  within  a  year  from  the  date  of 
the  patent,  or  in  case  he  should  not  work  the  patented  invention 
to  its  whole  extent  during  every  two  years  following  the  first  begin- 
ning of  working.  Articles  made  abroad  according  to  the  patent 
can  be  imported  into  the  empire  without  invalidating  the  patent. 
Patents  are  invalidated  if  it  is  proved  (a)  that  the  description  of 
the  patent  is  insufficient ;  (&)  that  the  patented  invention,  before 
the  date  of  the  official  certificate,  was  not  novel  in  the  empire,  or 
that  the  invention  had  been  imported  without  having  been  patented 
abroad,  or  that  the  Austrian  patent  has  not  been  granted  to  the 


proprietor  of  the  foreign  patent  or  to  his  legal  assignee ; 
the  proprietor  of  a  valid  patent  proves  that  the  . 
patented  at  a  later  period  is  1  with  his  own  discover}*  or 

invention  previously  patented. 

•BELGIUM. 

An  Act  bearing  date  May  -j  i.  1854,  and  a  royal  decree  of  the 
same  date,  and  an  amending  law  of  March  27,  1857,  determine 
the  law  of  patents  in  this  kingdom. 

tents  are  granted  without  previous  examination,  at  the  sole 
risk  of  the  applicants.  They  may  be  obtained  by  the  inventor 
or  by  any  other  person  with  his  consent,  or  by  one  of  several  in- 
ventors  having  a  foreign  patent.  They  may  be  obtained  in  the 
name  of  a  firm  or  company.  Patents  of  importation  can  be 
obtained  for  inventions  previously  patented  abroad  although  the 
inv-  ntion  may  have  been  published  in  specifications,  Ac.,  accord- 
ing to  legal  prescriptions. 

The  duration  of  patents  is  fixed  at  twenty  years,  except  in  the 
case  of  inventions  previously  patented  in  some  other  country, 
when  the  Belgian  patent  expires  with  the  prior  foreign  patent 
having  the  longest  term. 

Patents  are  subject  to  an  annual  and  progressive  tax,  viz. : — 
first  year,  10  frs.  (8*.) ;  second  year,  20  frs.  (16*.) ;  third  year, 
80  frs.  (24s.) ;  and  so  on  till  the  twentieth  year,  when  the 
tax  will  be  200  frs.  (8/.).  Each  annual  tax  is  to  be  paid  in 
advance. 

No  tax  is  payable  on  patents  for  improvement  when  delivered 
to  the  original  patentee ;  specifications  can  be  amended  by- 
patents  of  addition ;  such  patents  expire  with  the  original 
patent,  and  patents  also  expire  with  the  term  for  which  a  prior 
patent  having  the  longest  term  has  been  granted. 

Patents  confer  on  their  owners  or  assigns  the  exclusive  right 
of  working  the  invention  for  themselves,  or  having  it  worked 
by  persons  authorised  by  them.  Articles  made  according  to  the 
patent  can  be  imported  from  abroad  without  invalidating  the 
patent  so  long  as  the  principal  manufacture  is  in  Belgium.  Pro- 
ceedings for  infringement  may  be  taken  before  the  Belgian 
tribunals,  where  the  patentee's  rights  are  infringed  either  by  the 
manufacture,  holding,  selling,  or  exposing  for  sale  the  patented 
articles. 

Applicants  for  patents  are  required  to  lodge  at  the  proper 
office,  in  duplicate,  a  full  description  of  the  invention,  with  draw- 


BOLIVIA  429 

ing,  models,  or  samples,  when  necessary.     The  first  annual  tax 
is  paid  when  the  documents  are  lodged. 

Specifications  of  patents  are  published  three  months  after  the 
grant.  The  annual  tax  can  he  paid  within  one  month  after  the 
date  when  it  is  due  without  fine,  and  can  be  paid  within  five 
months  after  the  expiration  of  the  one  month  on  payment  of 
10  frs.  besides  the  annual  tax. 

The  owner  of  a  patent  must  work  the  invention  in  Belgium 
within  one  year  from  its  having  been  worked  abroad ;  otherwise 
the  Government  will,  on  presentation  of  a  petition  to  that  effect, 
declare  the  patent  to  be  void,  and  this  will  be  the  case  if  a  sus- 
pension of  the  working  of  the  invention  for  one  year  takes  place, 
unless  good  reason  can  be  given. 

Patents  will  become  void  if  the  invention  is  destitute  of 
novelty,  either  by  reason  of  having  been  previously  worked  in 
Belgium  or  of  having  been  published  in  a  printed  work  (unless 
the  publication  be  entirely  the  result  of  legal  requirement) :  if  the 
specification  is  not  full  and  complete  ;  or  in  case  the  invention 
has  been  previously  patented  in  Belgium  or  abroad,  the  patentee 
not  being  the  proprietor  of  the  foreign  patent,  or  having  his 
authorisation. 

BOLIVIA. 

A  law  of  May  8,  1858,  gives  protection  to  inventors  and  to 
importers  of  new  inventions  for  not  less  than  ten  or  more  than 
fifteen  years,  but  the  protection  to  importers  of  inventions  known 
abroad  is  limited  to  the  locality  in  which  the  imported  invention 
is  worked. 

The  State  is  authorised  to  buy  the  secret  of  any  invention 
which,  being  useful  to  industry,  may  be  for  the  general  benefit. 

The  applicant  for  protection  for  inventions  or  improvements 
must  lodge  a  specification,  explaining  them,  and  must  also  lodge  a 
specimen  of  the  manufacture  or  product  of  the  invention.  When 
the  applicant  is  an  importer  he  must  furnish  drawings  or  models 
or  a  detailed  description  of  the  principles,  methods,  and  processes 
of  the  industry  as  well  as  of  the  product.  A  commission  is  then 
appointed  to  examine  into  the  subject  of  the  application  and  to 
report  to  the  Secretary  of  the  Interior  thereon,  and  within  three 
months  of  the  report  the  patent,  if  allowed,  is  issued  ;  the  patent 
does  not  guarantee  the  merit  or  utility  of  the  invention.  A 
patentee  may  vary  the  description  of  his  invention  either  before 
or  after  the  grant  of  a  patent.  All  transfers  of  the  privileges  must 
be  by  registered  assignment. 


430 

Articles  made  abroad  according  t<  ntion  emu  be  im- 

ported into  Bolivia  without  risk  of  invalidating  the  patent. 

The  privileges  lapse  if  the  inventor  has  concealed  the  true 
methods  of  working  his  invention,  or  if  the  inventor  uses  secret 
methods  not  detailed  in  his  description,  or  if  tin-  invention  has 
been  published,  or  if  tin    invention  is  not  fully  worked  witi 
year  and  a  day  from  the  date  of  the  grant. 


The  law  X.  <  >ctober  1  4  ,  1882,  regulates  the  gran  • 

of  patents  in  Brazil.     Patents  are  granted  in  Brazil  for  the  term  of 
a  years,  and  patents  of  addition  are  also  granted  expiring 

with  tht  original  patent.  Foreigners  having  obtained  patents 
abroad,  and  applying  for  their  patents  in  Brazil  within  seven 
months  from  the  date  of  the  grant  of  their  foreign  patent,  are  not 
then  prejudiced  by  any  other  application,  or  by  the  publication  of 
the  imvntiim  in  ]>ra/.il  in  the  meantime. 

Inventors  can  also  publicly  exhibit  their  inventions  in  Brazil 
prior  to  their  applications  for  patents,  on  obtaining  the  necessary 
permission  for  the  purpose.  An  inventor  desiring  to  obtain  a 
patent  in  Brazil  must  deposit  in  duplicate  a  specification  in 
Portuguese,  together  with  drawings  of  the  invention.  The  appli- 
cation must  be  limited  to  one  invention  only  ;  if  the  invention 
has  for  its  object  chemical,  pharmaceutical,  or  alimentary  pro- 
ducts. the  (iovernwent  will  order  an  examination  of  samples; 
hut  if  it  involves  none  of  these  things  the  patent  will  issue  as  of 
course.  During  the  first  year  of  the  patent  only  the  inventor 
can  obtain  a  patent  for  improvement  ticates  of  improve- 

ments are  given  to  the  original  inventors  and  appended  to  the 
patents. 

Goods  made  according  to  the  invention  can  be  imported  from 
abroad  without  injury  to  the  patent. 

The  patent  will  continue  valid  so  long  as  the  previous  foreign 
patent  remains  in  force,  on  payment  of  a  duty  of  2/.  Is.  9d.  for 
the  first  year,  8/.  10s.  10<7.  for  the  second  year,  41.  14*.  &/.  for 
hird,  and  so  on,  increasing  II.  8s.  1\<L  yearly.  All  assign- 
ments must  be  registered  in  the  Government  Office.  The  patent 
will  become  void  if  the  invention  is  not  carried  into  operation 
within  three  years  from  the  grant,  or  if  the  working  is  thereafter 
interrupted  for  more  than  a  year,  if  the  annuities  are  not  duly 
paid,  if  the  patentee  residing  out  of  the  country  has  no  repre- 
sentative in  Brazil,  and  upon  the  expiration  of  an  earlier  foreign 
patent  for  the  same  invention. 


CHILI  431 

Legal  proceedings  can  be  taken  for  infringements,  and  the 
patentee  can  recover  damages.  Infringers  are  also  liable  to 
penalties  for  the  benefit  of  the  Treasury.  Where  the  infvinger 
has  been  a  workman  of  the  patentee,  or  is  associated  with  such 
workman,  the  circumstances  are  considered  to  be  aggravated. 

Penalties  are  also  imposed  on  persons  who  wrongfully  state 
themselves  to  be  patentees,  or  continue  to  call  themselves 
patentees  after  the  lapse  of  the  patent,  and  on  patentees  adver- 
tising as  such  without  indicating  the  special  object  for  which  the 
patents  have  been  granted. 

CHILI. 

Article  152  of  the  Chilian  Constitution,  dated  May  1833, 
accords  to  every  author  or  inventor  the  exclusive  proprietorship  of 
his  discovery  or  invention  for  a  limited  period  to  be  fixed  by  law. 

The  conditions  under  which  such  privileges  are  granted,  and 
the  duration  of  the  same,  are  regulated  by  a  law  passed  in  1840, 
supplemented  by  other  laws  decreed  and  promulgated  in  August 
1851,  and  August  16,  1856,  and  in  1872. 

The  inventor  of  a  new  invention  or  discovery  may  submit  the 
same  to  the  Home  Minister,  who  will  refer  the  application  to 
Commissioners  for  examination,  and  if  their  report  be  favourable 
the  Minister  will  grant  a  patent. 

The  term  of  a  patent  cannot  exceed  ten  years.  The  term  is 
fixed  by  the  Government.  The  patentee  has  to  pay  a  sum  of  10Z. 
into  the  Treasury,  and  10Z.  for  the  seal.  The  specification,  &c., 
is  kept  secret  until  the  expiration  of  the  term. 

Patents  may  be  extended  when  the  importance  of  the  inven- 
tion justifies  it,  but  application  must  be  made  therefor  six  months 
before  the  expiration  of  the  first  term. 

A  period  exclusive  of  the  term  of  the  patent  is  allowed  for  the 
erection  of  machinery,  &c.,  for  working  the  patent,  but  should 
the  inventor  fail  to  carry  out  the  same  within  that  period,  or 
discontinue  the  working  for  more  than  a  year,  or  produce  articles 
inferior  to  the  original  sample,  the  patent  becomes  void.  Articles 
made  according  to  the  invention  can  be  imported  from  abroad 
without  invalidating  the  patent. 

Patents  may  be  assigned.  Transfers  must  be  noted  in  the 
transfer  book.  Infringers  of  a  patented  article  are  liable  to  a 
fine  and  to  the  forfeiture  of  the  article  produced,  and  the  establish- 
ment and  implements  used  in  its  manufacture.  Any  person  not 
being  the  true  inventor  fraudulently  obtaining  a  patent  is  liable 
to  fine  or  imprisonment. 


t:ij  COLOMBIA-COKOO  FREE  STATE 


Tli-  to  grant  patents  in  Colombia  is  limited  and  defined 

In  the  law  of  May  13,  1800. 

A  patent  maybe  obtain.  -1  1>\  the  invt-ntor,  imi»ort«-r,  or  bolder 
of  a  fort-ign  patent  for  any  invention  or  imj>ro\i  -im-nt  of  inecbanical 
apparatus,  combination  of  materials  or  process,  and  for 
making  and  sale  of  any  manufacture  or  industrial  prodtu  t,  hut 
not  for  tbe  importation  of  foreign  productions,  whetber  natural  or 
manufactured. 

Tin  duration  of  a  patent  cannot  exceed  twenty  nor  be  leas 
than  five  years,  and  in  the  case  of  an  invention  previously  patented 
abroad  such  duration  is  subject  to  tbe  earlier  expiration  of  tbe 
prior  foreign  patent. 

Th»  inventor  is  required  to  present  a  petition  to  the  executive 
power  setting  forth  Die  nature  of  his  invention  or  improve! 
and  statin-  the  number  of  years  for  which  a  patent  is  desired  ; 
and  if  the  decision  be  favourable,  he  must  furnish  within  forty 
days  a  full  description  of  the  invention,  accompanied  by  drawings 
or  models  if  necessary.  A  patent  will  then  be  issued  without 
any  previous  examination  as  to  the  novelty  or  utility  of  the 
invention.  I'pon  the  grant  of  the  patent  a  fee  varying  from  ten 
to  twenty  dollars  for  every  year  of  the  patent  is  payable,  and  a 
sum  of  twenty  dollars  must  be  paid  on  presenting  the  petition. 

A  patent  is  refused  when  the  invention  endangers  public 
salubrity  or  security,  or  encroaches  upon  proprietary  rights 
already  acquired,  and  a  grant  may  be  subsequently  revoked  if  it 
is  found  to  violate  existing  rights.  A  patent  also  becomes  void 
if  during  a  whole  year  the  invention  is  not  worked,  unless  it  be 
from  unavoidable  circumstances,  but  the  importation  from  abroad 
of  articles  made  according  to  the  invention  does  not  invalidate 
the  patent.  The  descriptions  furnished  by  the  inventor  are  pub- 
lished only  on  the  expiration  of  the  grant. 

Infringers  may  be  prosecuted  in  accordance  with  the  penal 
laws  of  the  state. 

CONGO  FREE  STATE. 

A  law  of  October  29,  1886,  provides  for  the  protection  of  in- 
ventions within  this  state. 

Every  discovery  and  improvement  capable  of  being  worked 
as  an  object  of  industry  or  commerce  is  patentable.  Patents  of 
invention,  importation,  and  improvement  are  granted  without 


COSTA  RICA-  DENMARK  433 

previous  examination  at  the  risk  of  the  applicants  and  without 
guarantee. 

Patents  of  inventions  are  granted  for  twenty  years ;  patents 
of  importation  are  limited  to  the  term  of  the  foreign  patent ;  and 
patents  for  improvements  expire  with  the  original  patent. 

The  Government  fee  for  each  patent  is  100  francs  paid  in 
advance.  No  duty  is  payable  on  patents  for  improvements. 

Patentees  have  power  to  prosecute  and  recover  damages  from 
infringers,  and  to  obtain  confiscation  of  the  infringing  articles. 

All  applications  for  patents  must  be  signed  by  the  applicant 
or  his  attorney,  and  the  application  must  be  accompanied  by  a 
specification  and  by  drawings,  models,  or  specimens  of  the 
invention. 

Patents  may  be  assigned,  and  notice  of  the  assignment  must 
be  given  to  the  Department  for  Foreign  Affairs. 

COSTA  EICA. 

There  is  no  special  law  relating  to  the  grant  of  patents,  but 
the  republic  is  authorised  by  the  Constitution  to  grant  patents 
for  terms  fixed  by  Congress.  The  application  for  a  patent  is 
attended  with  considerable  expense,  and  the  terms  of  patents 
granted  are  similar  to  the  other  South  American  Kepublics. 

DENMABK. 

No  laws  have  been  passed  in  Denmark  for  the  protection  of 
inventions,  but  inventors,  whether  natives  or  foreigners,  as  well 
the  first  importer,  may  obtain  patents. 

All  inventions  or  improvements  are  patentable. 

The  patent  dates  from  the  day  of  the  signature  of  the  King 
to  the  patent. 

Patents  of  invention  and  of  importation  are  granted.  Im- 
provements can  be  protected  by  new  patents. 

The  term  of  patents  of  invention  is  fixed  by  the  Government,, 
and  cannot  exceed  fifteen  years ;  patents  are  granted  to  foreigners 
for  five  years  only. 

A  uniform  tax  of  34  kroner  (  =  60  francs)  is  required  for  each 
application  for  a  patent.  Over  and  above  these  sums  are  stamp 
duties  to  be  paid  in  advance. 

Prolongations  are  not  usually  granted  beyond  the  term  fixed 
by  Government  for  the  duration  of  the  patent. 

A  slight  examination  of  the  invention  is  made  before  granting 
the  patent. 


•131  ECUADOR 

Patents  are  not  published,  and  information  respecting  them 
cannot  be  obtained  without  the  t ion  of  the  Ministry  of 

the  Interior,  to  whom  a  demand,  with  the  special  motives  for  the 
same,  must  be  presented. 

The  working  of  the  invention  must  be  proceeded  with  daring 
the  first  year  of  the  patent,  and  continued  without  intemii 
during  the  whole  term. 

The  patent  does  not  prevent  the  introduction  into  the  country 
of  similar  products  manufactured  abroad. 

Assignments  of  patents  are  not  authorised  ;  they  may,  how- 
ever, be  accomplished  by  the  joint  demand  of  the  proprietor  and 
of  the  assignee  for  a  new  patent  in  the  name  of  the  latter. 

The  petition  to  the  King  must  indicate  the  object  of  the  in- 
on. 

The  patent  becomes  void  if  the  invention  is  not  new,  or  if  it 
has  not  been  worked  within  the  given  time. 


ECUADOR. 

The  law  for  the  protection  of  inventions  within  this  State  is 
dated  October  18,  1880. 

Inventions  are  protected  for  not  less  than  ten  or  more  than 
fifteen  years.  Importers  of  machinery  or  of  new  methods  of 
manufacture  not  previously  known  in  the  republic  are  entitled 
to  exclusive  privileges.  If  the  establishment  of  the  machine 
or  industry  imported  requires  an  outlay  of  twenty- five  thousand 
dollars  protection  is  granted  for  three  years,  if  fifty  thousand 
dollars  for  six  years,  and  if  a  hundred  thousand  or  more  for  ten 
years. 

The  applicant  for  any  of  the  classes  of  privilege  must  petition 
the  executive  power,  explaining  in  what  the  invention  consists, 
and  delivering  a  specimen  of  the  manufacture,  also  a  specification  of 
the  invention  ;  the  Government  thereupon  appoints  a  Commission 
of  three  persons  to  examine  and  report  thereon  to  the  Minister 
of  the  Interior,  who  presents  the  papers  to  Congress,  and  Congress 
after  examining  the  same  will  grant  or  refuse  the  patent. 

All  assignments  must  be  made  by  public  instruments. 

\Vhere  there  are  conflicting  applications  priority  is  decided  by 
the  certificate  of  the  Under  Secretary  of  the  Interior.  Papers 
relating  to  patents  are  registered  in  a  special  register  at  the 
Ministry  of  the  Interior.  The  grant  of  privileges  is  communicated 
by  the  Ministry  of  the  Interior  to  the  Provincial  Governors,  and 


FINLAND  435 

published  in  the  official  journal.  On  the  expiration  of  the 
privilege,  the  petition,  description,  and  other  papers  are  to  be 
published  and  deposited  in  the  public  library  of  the  capital  of 
the  republic. 

The  Act  contains  provisions  for  enabling  the  patentee  to  take 
proceedings  against  and  recover  damages  from  infringers. 

The  privilege  lapses  when  the  invention  is  declared  as  contrary 
to  the  laws  of  the  state,  to  public  safety,  or  to  the  police  regu- 
lations, and  also  if  the  inventor  is  convicted  of  having  omitted 
from  his  description  the  true  method  of  carrying  his  invention  into 
practice,  or  of  using  secret  methods  not  detailed  in  his  description, 
or  if  the  invention  has  been  described  and  published  in  the  press 
within  or  without  the  republic ;  or  if  the  invention  is  not  put 
into  complete  practice  within  a  year  and  a  day  from  the  grant, 
or  if  the  obligations  of  the  patent  are  not  complied  with. 

FINLAND. 

Russian  letters  patent  do  not  cover  the  Grand  Duchy  of 
Finland.  Patents  have  been  granted  in  Finland  since  the  year 
1842 ;  a  patent  law  was  passed  March  30,  and  came  into 
operation  on  June  1,  1876. 

Patents  are  granted  for  inventions  or  improvements  in  arts 
and  manufactures.  Medicines  and  inventions  contrary  to  morals 
or  public  safety  are  not  patentable.  Patents  are  granted  only 
to  the  true  inventor,  whether  native  or  foreigner. 

As  long  as  the  ownership  of  the  invention  is  not  contested, 
the  person  to  whom  the  privilege  is  granted  has  a  right — 

1.  To  the  absolute   property  in  the  invention  for  the  time 
specified  in  the  letters  patent. 

2.  To  use  the  invention  himself,  and  to  sell  its  results  to  the 
public,  or  to  transfer  the  patent  to  another  person. 

3.  To  prosecute  persons  infringing  the  patent  in  the  courts  of 
law,  and  to  recover  an  indemnity  for  the  loss  sustained  by  the 
infringement. 

4.  To  treat  as  an  infringement  the  making  of  articles  in  a 
similar  manner  with  unessential  differences. 

The  person  applying  for  a  patent  must  deliver  to  the  Govern- 
ment an  exact  description  of  his  invention,  with  all  essential 
details  and  the  mode  of  carrying  it  into  effect,  and  also  the 
necessary  plans  and  drawings,  and  models,  if  deemed  necessary, 
not  keeping  back  anything  requisite  to  be  known.  The  inventor 
has  also  to  state  in  what  respects  his  invention  is  new,  or  whether 

F  F  2 


436  1  INLAND 

it  is  an  improvement  upon  an  invention  already  oaed ;  the  novelty 
of  tlu  iimntiou  or  improvement  moat  be  specified  in  the 
claims. 

Inventions  made  in  foreign  countries  may  be  patented  m 
l-'inland  when  no  detailed  description  has  been  published,  and 
when  they  have  not  been  already  introduced  into  the  Grand 
Ihichy.  Where  an  inventor  has  a  patent  for  his  invention  in  a 
foreign  country,  and  has  been  compelled  to  publish  a  specification 
showing  the  mode  of  carrying  his  invention  into  effect,  such 
publication  does  not  prejudice  the  granting  of  a  patent  in 
Finland. 

If  the  invention  has  been  previously  patented  abroad,  an  au- 
thenticated statement  must  be  given  as  to  when  the  patent  was 
issued  and  for  what  term.  In  such  a  case  the  duration  of  the 
Finnish  patent  cannot  extend  beyond  the  expiration  of  the  patent 
taken  out  abroad  by  the  inventor. 

Patent  applications  are  subject  to  an  investigation  into  the 
novelty  and  merits  of  the  invention. 

Patents  are  granted  for  the  terms  of  from  three  to  twelve 
years  (the  extreme  limit).  The  duration  of  the  patent  is  fixed  by 
the  Government  in  accordance  with  the  state  of  that  part  of 
Finnish  industry  to  which  the  invention  appertains  or  with  which 
it  is  most  nearly  connected.  No  prolongation  of  the  term  origi- 
nally grunted  can  be  obtained.  The  Government  tax  is  20  Finnish 
marks  (1  Finnish  mark  =  1  franc)  for  each  year  of  the  duration  of 
the  patent,  but  there  are  extra  charges  of  the  Finnish  Senate  to 
be  paid,  for  registering  the  application,  the  issue  of  the  certificate 
of  application,  stamps,  poor  rates,  the  "^'"p.  Ac.,  amounting  to 
some  hundred  marks. 

The  patentee  is  bound,  within  two  months  from  the  date  of 
issue  of  the  letters  patent,  to  publish  the  specification  of  his 
patented  invention  in  two  Finnish  newspapers,  in  the  Swedish  and 
Finnish  languages. 

The  time  prescribed  within  which  the  patented  invention  must 
IK?  worked  is  generally  two  years,  but  this  time  may  be  reduced 
to  one  year,  or  extended,  by  application,  to  a  period  not  exceeding 
four  years.  After  this,  proof  of  the  working  must  be  given  every 
year. 

The  patent  will  be  annulled  if  the  patentee  has  not  published 
the  specification  of  his  patented  invention,  or  proved  the  working 
of  it  within  the  time  prescribed ;  if  it  should  be  proved  by  verdict 
of  a  jury  that  the  same  invention  or  improvement  for  which  a 
patent  has  been  granted  was  already  in  use  in  Finland  or  else- 


FRANCE  437 

\vhere,  or  patented  by  another  person  before  the  application  was 
made  ;  or  if  it  should  turn  out  that  the  patent  is  contrary  to  morals 
or  public  safety. 

In  case  of  the  absence  of  the  inventor,  the  person  applying 
for  the  patent  must  be  duly  authorised  by  power  of  attorney. 

For  improvements  in  a  patented  invention  a  new  patent  must 
be  applied  for. 

*FEANCE. 

As  the  country  nearest  our  own  shores,  and  with  which  our 
intercourse  is  so  close,  it  is  desirable  all  inventors  should  be  well 
informed  on  the  subject  of  the  French  laws. 

Letters  patent  for  inventions  (brevets  d' invention)  are  princi- 
pally regulated  in  France  by  a  law  bearing  date  July  5, 1844,  the 
material  parts  of  which  are  as  follows  : — 

Every  new  discovery  or  invention  in  any  branch  of  industry 
confers  upon  its  author,  under  the  conditions  and  for  the  time 
hereafter  mentioned,  the  exclusive  right  of  working  the  same  for 
his  own  benefit.  Such  right  is  constituted  by  the  documents 
issued  by  Government  denominated  brevets  d'invention,  or  brevets 
d' importation. 

The  following  cannot  be  patented : — (1)  Pharmaceutical 
compounds,  or  medicines  of  any  kind,  these  being  governed 
by  special  laws  and  regulations,  principally  by  a  decree  of 
August  18,  1810  ;  (2)  schemes  and  projects  of  credit  and  finance. 

The  duration  of  patents  is  fifteen  years ;  the  payment  in 
respect  of  a  patent  for  fifteen  years  is  1,500  francs.  This 
sum  is  to  be  paid  by  yearly  instalments  of  100  francs,  and  the 
patent  will  expire  if  default  is  made  in  payment  of  any  one 
instalment.  The  duties  may  all  be  paid  up  in  advance  when 
desired. 

Foreigners  may  obtain  patents  in  France  ;  and  persons  who 
have  patented  inventions  abroad  may  obtain  patents  for  them  in 
France,  the  French  patent  expiring  when  the  foreign  patent 
expires. 

Persons  desirous  of  obtaining  a  patent  must  apply  by  peti- 
tion to  the  Minister  of  Agriculture  and  Commerce,  and  give  a 
description  of  the  discovery,  invention,  or  application  forming 
the  subject  of  the  proposed  patent,  accompanied,  when  needful, 
by  drawings. 

The  petition  must  be  in  the  French  language,  and  must  be 
restricted  to  a  single  principal  object,  with  the  necessary  details 
and  its  proposed  applications.  It  must  mention  the  duration 


438 

h  the  Applicant  desires  for  the  pat*  ust  also  give 

n  title,  comprehending  a  summary  and  precise  designation  <  : 
subject  of  the  inv«  ntion. 

No  documents  will  be  received  except  on  production  of  a  re- 
proving payment  of  a  sum  of  100  francs  (4/.),  on  account 
of  the  tax  on  the  pa 

The  patents  which  have  been  applied  for  in  due  form  are 
<li  livt  ml  without  previous  examination,  at  the  risk  of  the  appli- 
cants, and  without  Government  guarantee,  either  as  to  the 
reality,  the  novelty,  or  :  :tion,  or  as  to  the 

fidelity  <>r  accuracy  of  the  description. 

Tlit-  patentee  or  the  person  entitled  to  the  patent  has  the 
ri-lit.  during  the  currency  of  the  patent,  to  make  alterations, 
additions,  or  improvements  in  tin  im<  ntimi.  and  the  proceed- 
ings for  their  protection  are  similar  to  those  required  to  be  taken 
in  applying  for  an  original  patent.  The  petition  is  subjected  to 
a  tax  of  20  francs  only.  T  icates  of  addition  obtained 

by  any  one  person  entitled  under  the  patent  accrue  to  the  benefit 
of  all.' 

A  patentee  who,  in  respect  of  an  alteration,  addition,  or  im- 
provement, desires  in  place  of  a  certificate  of  addition  expiring 
with  the  original  patent  to  take  out  a  principal  patent  must  pay 
the  annual  tax  levied  on  original  patents. 

( >nly  the  patentee  and  those  claiming  under  him  can,  dur- 
ing a  year,  obtain  a  valid  patent  for  an  alteration,  improvement, 
or  addition  to  the  invention  forming  the  subject  of  the  original 
patent ;  nevertheless,  every  person  wishing  to  obtain  a  patent  for 
an  alteration,  improvement,  or  addition  to  a  discovery  already 
patented  may  in  the  course  of  the  said  year  make  a  formal  appli- 
cation to  the  Minister  of  Agriculture  and  Commerce,  which  is  to  be 
transmitted  to  him.  and  remains  deposited  under  seal.  At  the 
expiration  of  the  year  the  seal  is  broken  and  the  patent  issued  ; 
but  the  original  patentee  always  has  the  preference  in  respect  of 
alterations,  improvements,  and  additions  for  which  he  himself 
shall  during  the  year  have  demanded  a  certificate  of  addition  or 
patent. 

A  patentee  may  assign  the  whole  or  part  of  bis'property  under 
a  patent.  The  entire  or  partial  assignment  of  a  patent,  whether 
as  a  gift  or  for  valuable  consideration,  can  only  be  made  by  a 
notarial  act,  and  after  payment  of  all  the  instalments  of  the  tax. 
No  assignment  is  valid  with  r.  spect  to  third  parties  until  after 
registration,  but  it  is  not  necessary  to  register  a  simple  licence  to 
manufacture. 


FRANCE  439 

The  descriptions,  drawings,  specimens,  and  models  of  patents 
issued  remain  deposited,  until  the  expiration  of  the  patents,  with 
the  Minister  of  Agriculture  and  Commerce,  where  they  may  be 
inspected  by  any  one,  free  of  charge.  After  their  expiration 
patents  can  be  inspected  gratuitously  at  the  Conservatory  of  Arts 
and  Commerce. 

Patents  are  null  and  of  no  effect  in  the  following  cases,  viz. : 

(1)  If  the  discovery,  invention,  or  application  is  not  new  ;  (2)  if 
the  discovery,  invention,  or  application  is  not  patentable  ;  (3)  if 
they  refer  to  principles,  methods,  systems,  discoveries,  and  theo- 
retical or  purely  scientific  conceptions,  the  industrial  applications 
of  which  are  not  shown ;  (4)  if  the  discovery,  invention,  or  appli- 
cation is  contrary  to  the  order,  safety,  morals,  or  laws  of  France  ; 
(5)  if  the  title  under  which  the  patent  has  been  applied  for 
fraudulently  indicates  something  which  is  not  the  true  subject- 
matter  of  the  invention ;  (6)  if  the  description  annexed  to  the 
patent  is  insufficient  for  carrying  the  invention  into  effect,  or  if 
it  does  not  completely  and  fairly  state  the  real  methods  adopted 
by  the  inventor. 

No  discovery  is  held  new  which,  previously  to  the  date  of  the 
deposit  of  the  petition,  has  received  publicity  in  France,  or  in  a 
foreign  country,  sufficient  to  enable  anyone  to  execute  it,  except 
in  the  case  of  an  application  made  within  the  terms  of  the  Inter- 
national Convention. 

A  patentee  will  be  deprived  of  his  rights  under  the  following 
circumstances :  (1)  If  he  should  fail  to  pay  the  annual  payment 
before  the  commencement  of  each  year  of  the  term  of  the  patent ; 

(2)  if  he  does  not  put  his  invention  or  discovery  into  execution 
in  France  within  two  years  from  the  date  of  the  signature  of  the 
patent,  or  if  he  shall  cease  for  the  space  of  two  consecutive  years  to 
work  the  patent — unless,  in  either  case,  he  can  justify  his  inaction  ; 

(3)  and,  in  the  case  of  patents  applied  for  before  the  International 
Convention  came  into  force,  if  he  introduces  into  France  objects 
made  in  a  foreign  country  similar  to  those  protected  by  his  own 
patent.     This  did  not  apply  to  models  introduced  by  the  patentee 
with  the  permission  of  the  Government. 

Whoever,  in  his  trade  inscriptions,  advertisements,  prospec- 
tuses, marks,  or  stamps,  shall  assume  the  title  of  patentee,  with- 
out possessing  a  patent  issued  according  to  law,  or  after  the  ex- 
piration of  a  patent ;  or  who,  being  a  patentee,  shall  describe 
himself  as  a  patentee,  or  refer  to  his  patent,  without  adding 
thereto  the  words — '  sans  garantie  du  gouvcrnement '  (without  the 
guarantee  of  the  Government),  or  the  letters  S.  G.  D.  G.,  is  liable 


410  <;I:KMANY 

to  a  penalty  of  from  50  to  1,000  francs.    In  case  of  a  repetition 
of  the  offence  the  penalty  may  be  doubled. 
The  patent  covers  all  the  French  colonies. 

GBRMAXT. 

The  law  of  the  Empire  of  Germany  with  respect  to  patents  is 
regulated  by  an  Act  which  was  passed  May  25,  1877,  and  came 
into  operation  July  1,  1877.  By  this  law  patents  are  granted  for 
new  inventions  which  admit  of  industrial  use,  with  the  exception 
of:  (1)  Inventions  the  use  of  which  would  be  incompatible  with 
tin  laws  or  the  public  morals  ;  i :  ana  relating  to  articles 

of  food  (for  nourishment  or  luxuries),  of  medicines,  and  of  sub- 
stances produced  by  chemical  process,  so  far  as  the  invention 
does  not  relate  to  the  method  of  producing  such  articles. 

An  invention  is  not  regarded  as  new  if  it  has  already  been 
described  in  a  printed  publication  in  any  country,  or  publicly  used 
;  many  at  the  time  of  application  for  a  patent. 

The  first  applicant  for  a  patent  of  invention  is  entitled  to  the 
gram. 

The  claim  of  the  petitioner  to  the  grant  of  a  patent  is  void  if 
-sential  contents  of  his  application  have  without  permission 
been  taken  from  the  descriptions,  drawings,  models,  implements, 
or  arrangements  of  another  person,  or  from  a  method  of  manufac- 
ture used  by  the  same,  and  if  such  person  raises  opposition  on 
that  account. 

The  patent  has  no  effect  against  a  person  who,  at  the  time  the 
patentee  made  his  application,  had  already  been  using  the  inven- 
tion in  Germany,  or  who  had  made  the  necessary  preparations 
for  using  the  same  ;  neither  has  it  any  effect  in  so  far  as  the  in- 
vention is  intended  to  be  used  for  the  army  or  navy  or  in  the  in- 
terest of  public  welfare.  In  such  a  case  the  patentee  is,  however, 
entitled  to  an  adequate  compensation  by  the  empire  or  the  state 
in  whose  special  interest  a  limitation  of  the  effect  of  the  patent 
has  been  applied  for.  The  amount  of  such  compensation  is  fixed 
by  a  court  of  law  in  case  an  agreement  cannot  be  arrived  at. 
The  patent  does  not  affect  means  of  conveyance  coming  tempo- 
rarily within  the  empire. 

Patents  are  granted  for  fifteen  years,  commencing  with  the 
day  following  the  day  of  application.  If  an  invention  is  an  im- 
provement upon  an  earlier  invention  patented  by  the  applicant, 
he  may  apply  for  a  supplementary  patent,  which  expires  with  the 
original  patent. 


GERMANY  441 

A  fee  of  30  marks  is  to  be  paid  on  the  issue  of  the  patent,  and 
a  further  fee  must  be  paid  for  each  patent  at  the  commencement 
of  the  second  and  every  subsequent  year,  amounting  in  the  first 
instance  to  50  marks,  and  increasing  by  50  marks  per  annum  for 
the  time  of  duration  of  the  patent. 

The  patent  expires  if  the  patentee  resigns  the  same,  or  if  he 
fails  to  pay  the  fees  within  three  months  at  the  latest  after  they 
have  become  due. 

Patents  are  to  be  annulled  if  it  is  found  that  the  invention 
was  not  patentable  according  to  the  law,  or  if  the  essential  con- 
tents of  the  application  have,  without  permission,  been  taken 
from  the  descriptions,  drawings,  models,  implements,  or  arrange- 
ments of  another  person,  or  from  a  method  of  manufacture  used 
by  another. 

The  patent  can  be  revoked  after  the  expiration  of  three  years 
if  the  patentee  fails  to  carry  out  his  invention  in  Germany  to  a 
suitable  extent,  or  at  least  to  do  everything  that  he  can  to  carry 
it  out,  or  if  the  grant  of  licence  to  others  for  using  the  invention 
appears  to  be  in  the  interest  of  public  welfare,  but  the  patentee 
refuses  to  grant  such  licence  upon  an  adequate  compensation. 

Persons  not  residing  in  the  empire  can  only  claim  grants 
of  patents  on  the  appointment  of  a  representative  resident  in 
Germany. 

The  granting,  annulment,  and  revocation  of  patents  is  vested 
in  the  Patent  Office,  which  has  its  seat  at  Berlin. 

The  decisions  of  the  Patent  Office  are  subject  to  appeal. 

At  the  request  of  the  law  courts  the  Patent  Office  is  bound  to 
give  opinion  in  all  questions  concerning  patents. 

A  register  is  kept  at  the  Patent  Office,  in  which  the  subject- 
matter  and  the  duration  of  granted  patents  will  be  entered,  as 
well  as  the  names  and  addresses  of  the  patentees  and  of  the  repre- 
sentatives appointed  by  them  on  presentation  of  their  applications. 
The  commencement,  the  termination,  the  expiration,  the  decree 
of  annulment,  and  the  revocation  of  patents  must  be  entered  in 
this  register,  and  simultaneously  published  in  the  '  Reichsan- 
zeiger.' 

The  essential  parts  of  specifications  and  drawings,  so  far  as 
their  inspection  is  permitted  to  the  public,  will  be  published  by 
the  Patent  Office  in  an  official  paper. 

The  application  for  the  grant  of  a  patent  for  an  invention 
must  be  made  in  writing  to  the  Patent  Office.  For  each  inven- 
tion a  separate  application  is  required.  The  application  must 
contain  tlfe  petition  for  the  grant  of  a  patent,  and  must  point  out 


442  01 

in  a  precise  manner  the  subject-matter  which  is  to  be  patented. 
It  must  also  be  accompanied  by  drawings  or  other  representa- 
tions, models,  and  samples,  where  necessary.1 

A  fee  of  20  marks  must  be  paid  on  filing  the  application. 

\\  Inn  tin-  invention  is  approved  by  the  Patent  Office,  the 
subject-matter  of  the  application  will  be  provisionally  protected 
in  favour  of  the  petitioner,  and  a  notification  of  the  same  will  be 
officially  published. 

If  the  Patent  Office  is  of  opinion  tli.it  the  invention  cannot  be 
considered  as  patentable,  the  application  will  be  rejected.  The 
applicant  can,  however,  make  one  appeal  from  such  a  decision. 

After  expiration  of  eight  weeks  from  the  day  of  publication 
the  Patent  Office  has  to  decide  as  to  granting  the  patent.  I' mil 
that  date  objections  against  the  granting  can  be  lodged  with  the 
Patent  Office.  They  must  be  made  in  writing  and  be  accompanied 
by  arguments. 

Before  finally  deciding,  the  Patent  Office  may  summon  both 
parties  to  attend  and  be  heard ;  it  may  also  cause  the  objections 
to  be  examined  by  suitable  persons  skilled  in  some  branch  of 
technical  science,  and  otherwise  institute  inquiries  for  elucidating 
the  matter. 

Against  a  decision  by  which  an  application  is  rejected,  the 
petitioner  may  appeal  within  a  stated  time,  usually  four  or  six 
weeks  after  its  notification,  and  against  the  decision  concerning 
the  granting  of  the  patent  OR  opposition,  the  petitioner  or  the 
opponent  may  appeal  within  a  similar  stated  time.  On  filing  the 
appeal  20  marks  must  be  paid. 

As  soon  as  the  granting  of  a  patent  has  been  decided  upon, 
the  Patent  Office  will  cause  a  notice  to  that  effect  to  be  published, 
and  then  issue  the  patent. 

If  a  patent  is  refused,  this  will  also  be  publicly  notified. 
Upon  the  refusal,  the  provisional  protection  shall  be  considered 
as  not  having  taken  effect. 

No  action  will  be  taken  upon  applications  which  are  not  written 
in  the  German  language. 

The  term  within  which  an  action  may  be  brought  for  an  in- 
fringement of  patent  right  is  limited  to  three  years  with  regard 
to  any  single  case  by  which  such  action  may  be  supported. 

1  In  the  case  of  applications  for  hand  fire-arms,  skates,  and  for  spindles 
for  spinning-machines,  models  are  always  required,  and  samples  of  the 
product  and  intermediate  products  in  chemical  process  cases ;  if  the  pro- 
duct is  a  tar  dyestuff,  samples  of  dyed  material  in  three  shades  must  also 
be  filed ;  they  may  be  demanded  in  other  casm 


GUATEMALA  443 

The  question  whether  damage  has  been  caused,  and  to  what 
amount,  will  be  decided  by  the  court  after  due  consideration  of 
all  circumstances. 

Sentence  will  be  passed  for  payment  of  a  fine  not  exceeding 
150  marks  or  imprisonment : 

1.  On  any  person  placing  on  articles,  or  their  packing,  any 
designation  calculated  to  cause  the  erroneous  impression  that 
such  articles  are  protected  by  a  patent  in  accordance  with  this 
law. 

2.  On  any  person  who  in  public  advertisements,  on  sign-boards, 
on  business  cards,  or  in  similar  notifications,  employs  a  designa- 
tion calculated  to  cause  the  erroneous  impression  that  the  articles 
thus  mentioned  are  protected  by  a  patent  in  accordance  with  this 
law. 

The  requirements  of  the  Patent  Office  are  so  stringent,  espe- 
cially in  respect  to  '  subject-matter,'  that  only  about  40  per  cent, 
of  the  applications  are  granted.  Patents  are  frequently  refused 
on  most  inadequate  grounds,  and  the  procedure  of  the  office 
frequently  entails  great  and  unnecessary  expense  upon  the  appli- 
cant. The  German  mark  is  about  equal  to  the  British  shilling. 


*  GUATEMALA. 

The  Eepublic  of  Guatemala  has  by  a  law  of  May  21,  1886, 
defined  the  rights  of  inventors. 

Patents  are  granted  for  terms  of  from  ten  to  fifteen  years  to 
natives  of  Guatemala  or  to  domiciled  foreigners,1  or  persons  who 
have  applied  for  patents  in  other  countries  of  the  International 
Convention. 

For  these  patents  application  must  be  made  to  the  Ministry 
of  the  Interior,  explaining  the  invention  or  improvement,  and 
soliciting  the  privilege.  When  the  patent  is  granted,  one  exact 
drawing  of  the  machine,  or  a  detailed  description  of  the  process, 
with  a  specimen  of  the  manufacture  or  product,  must  be  fur- 
nished. 

Patents  will  be  void  when  they  have  been  issued  prejudicially 
to  the  rights  of  a  third  party,  when  the  invention  is  not  put  into 
practice  within  a  year  from  the  date  of  the  grant,  or  when  aban- 
doned for  more  than  a  year,  or  when  the  products  are  inferior  to 
the  specimens  lodged. 

Every  person  has  the  right  of  improving  the  invention,  but 

1  A  Bill  was  presented  in  Congress  to  modify  this  disposition. 


444  HAWAII— HOLLAM) 

not  of  using  the  original  invention,  and  the  original  inventor 
cannot  use  the  improvements  made  by  another  except  by  agree- 
ment. Articles  made  abroad  according  to  the  invention  can  be 
imported  without  rendering  the  patent  invalid. 

When  the  term  fixed  by  the  grant  lias  expired  the  specifica- 
tion is  published. 

A  tax  is  reserved  by  the  patent  of  from  five  to  fifty  dollars  for 
each  year  of  the  grant,  payable  in  advance. 

The  same  law  also  provides  for  making  grants  in  favour  of 
undertakings  of  public  utility  in  <  i  uutemala  or  in  favour  of  th<- 
establishment  of  new  industries  or  improvements  upon  those 
already  existing. 

\l\\\  All. 

An  Act  of  August  29,  1884,  regulates  the  granting  of  patents, 
sects.  258  and  256  of  the  Civil  C<xle  having  previously  provided 
that  the  Minister  of  the  Interior  might  issue  patents  for  any  time 
not  exceeding  ten  years  upon  the  inventor  or  importer  delivering 
to  the  Minister  a  full  specification,  and  in  the  case  of  a  machine 
full  drawings  and,  if  required,  a  complete  model  thereof. 

Where  the  invention  is  of  a  composition  of  matter,  specimens 
of  the  ingredients  sufficient  for  experiment  must  be  furnished. 

Where  foreign  patents  are  in  existence,  patents  may  be  ob- 
tained unless  the  thing  patented  has  been  introduced  into  public 
use  in  the  Hawaiian  Islands  for  more  than  one  year  prior  to 
the  application.  The  patent  expires  on  the  expiration  of  the 
earliest  prior  foreign  patent. 

If  upon  an  examination  of  the  invention  by  the  Commissioner 
of  Patents,  he  considers  that  the  claimant  is  justly  entitled  to  a 
patent,  ami  that  the  invention  is  sufficiently  useful  and  im- 
portant, the  Minister  of  the  Interior  will  issue  the  patent.  The 
law  also  gives  the  inventor  power  to  file  a  caveat,  which  is  kept 
secret  and  gives  priority  for  one  year. 

Goods  made  according  to  the  invention  abroad  can  be  im- 
ported without  invalidating  the  patent. 

The  fees  payable  for  the  application,  commissioner's  report, 
and  the  sealing  amount  to  30  dollars. 


•HOLLAND. 
No  patents  are  granted  for  Holland. 


HONDURAS— ITALY  445 


HONDURAS. 

The  republic  hag  not  passed  any  special  law  relative  to  the  pro- 
tection of  inventions,  but  patents  are  granted  for  terms  fixed  in  each 
case.  The  terms  of  the  patents  granted  are  similar  to  those  of 
the  other  Central  American  Eepublics. 


*  ITALY. 

The  law  which  governs  the  grants  of  patents  for  the  kingdom 
of  Italy  is  dated  from  January  31,  1864,  confirming  the  earlier 
Sardinian  law  of  October  30,  1859. 

The  inventor  only,  whether  a  native  or  a  foreigner,  or  hig 
assign,  can  obtain  a  patent  of  invention. 

Inventions  are  considered  patentable  which  have  for  their  im- 
mediate object :  (1)  An  industrial  product  or  result ;  (2)  any 
instrument,  machine,  &c.,  or  mechanical  arrangement ;  (8)  any 
process  or  method  of  industrial  production  ;  (4)  a  motor,  or  the 
industrial  application  of  a  force  already  known ;  (5)  lastly,  the 
technical  application  of  a  scientific  principle  in  such  a  condition 
that  it  will  produce  direct  industrial  results. 

The  invention  must  be  novel. 

A  new  invention  or  industrial  discovery  patented  abroad  and 
not  yet  imported  into  Italy,  although  already  published  by  means 
of  such  foreign  patent,  confers  the  right  to  the  inventor,  or  his 
assign,  of  obtaining  a  patent  in  Italy,  provided  the  application  be 
made  before  the  expiration  of  the  foreign  patent,  and  before  the 
importation  or  use  of  the  invention  by  another  than  the  inventor. 

A  patent  of  invention  takes  effect  from  the  date  of  the  appli- 
cation, and  its  duration  from  the  last  day  of  that  one  of  the  months 
of  March,  June,  September,  and  December  which  follows  next 
after  the  date  of  the  application. 

Certificates  of  addition  are  granted,  and  are  annexed  to  the 
principal  patent.  Applications  for  certificates  of  addition  made 
during  the  first  six  months  by  the  owner  of  a  patent  have  pre- 
ference over  applications  for  new  patents  made  for  the  same 
invention  by  others. 

Certificates  of  reduction,  or  disclaimers,  may  be  demanded  by 
a  patentee  within  the  first  six  months  of  his  patent,  for  the  pur- 
pose of  reducing  the  patent  to  one  or  more  parts  of  the  invention 
forming  the  object  of  the  description  annexed  to  the  original 


44G  ITALY 

demand,  it  being  necessary  to  point  out  clearly  the  parts  to  be 
.  out  of  the  patent. 

Patents  are  granted  for  various  terms  from  one  to  fifteen  years, 
at  the  desire  of  the  petitioner.    A  patent  granted  for  aninvc-i 
already  patented  in  another  country  expires  with  that  patent 
for  which  the  longest  term  has  been  granted,  but  in  no  ease 
exceeds  the  maximum  limit  of  fifteen  years. 

Certificates  of  addition  expire  with  the  original  patent  to  which 
they  are  attached. 

Every  patent  is  liable  to  two  taxes:  the  one  proportional, 
consisting  of  as  many  times  10  francs  as  there  are  years  in  the 
term  demanded  ;  the  other  annual,  consisting  of  40  francs  for 
each  of  the  first  three  years  of  the  patent,  05  francs  for  each  of 

•  hree  following  years,  90  francs  for  the  seventh,  eighth,  and 
ninth  years,  115  francs  for  the  tenth,  eleventh,  and  twelfth  yean, 
140  francs  for  each  of  the  three  last  years. 

A  sum  of  20  francs  only  is  required  for  the  certificate  of 
addition,  to  be  paid  in  advance. 

All  certificates  of  prolongation  necessitate,  over  and  above  the 
taxes,  the  payment  of  a  sum  of  40  francs. 

Each  certificate  of  reduction  involves  the  payment  of  a  tax  of 
40  francs. 

The  amount  of  the  proportional  tax  for  the  term  demanded 
and  the  first  annuity  is  to  be  paid  when  making  the  application 
for  the  patent.  This  obligation  to  pay  in  advance  the  total  of 
:lu-  proportional  tax  becomes  burdensome  if  the  patent  should 
not  be  continued.  On  the  other  hand,  as  each  demand  for 
prolongation  necessitates  the  payment  of  a  fixed  tax,  and  the 
patents  demanded  for  more  than  five  years  have  accorded  to  them 
a  period  of  two  years  within  which  they  are  to  be  put  into 
operation,  the  usual  practice  adopted  by  those  who  have  not  to 
consider  the  possible  effect  of  the  short  term  on  subsequent 
patents  elsewhere  is  to  demand  a  patent  for  six  years.  The 
other  annuities  are  paid  in  advance  the  first  day  of  each  year  of 
the  term  of  the  patent,  or  in  advance  of  the  last  day  of  March, 
June,  September,  or  December  respectively,  and  are  subject  to 
triennial  augmentation,  even  in  the  case  of  prolongation  of  the 
patent.  Three  months'  grace  is  allowed  for  the  payment  of  the 
annuities,  and  if  this  period  lapses  the  patent  is  forfeited.  For 
the  prolongation  three  months'  grace  is  not  admitted. 

Patents  demanded  for  a  less  term  than  fifteen  years  can  be 
prolonged  to  this  term.  Each  demand  for  prolongation  must  be 
accompanied  by  the  receipt  for  the  taxes  and  the  original  letters 


ITALY  447 

patent,  or  an  authentic  copy  of  them,  showing  the  ownership  of 
the  patent. 

Demands  for  patents  are  subjected  to  no  other  examination 
than  that  in  reference  to  the  rules  laid  down  by  the  authorities, 
with  the  exception,  however,  of  patents  for  drinks  and  eatables, 
which  are  examined  by  the  Superior  Sanitary  Council. 

The  records  containing  the  certificates  of  deposit,  changes, 
additions,  cancelling,  or  assignment  of  patents  are  published. 
Persons  requiring  extracts  from  such  records  must  make  the 
application  on  stamped  paper  ;  the  extracts  are  supplied  at  the 
expense  of  the  applicant. 

The  drawings  and  descriptions  are  published  three  months 
after  the  grant  of  the  patent ;  anyone  can  then  obtain  one  or  more 
copies  at  his  own  expense. 

Every  three  months  a  list  of  the  patents  granted  during  the  pre- 
ceding three  months  is  published  in  the  official  journal.  Every 
six  months  the  descriptions  and  drawings  of  the  patents  granted 
during  the  previous  six  months  are  published. 

Patents  granted  for  a  term  not  exceeding  five  years  must  be 
put  in  operation  within  the  first  year  of  the  term,  and  the  working 
must  be  continued :  an  interruption  for  more  than  one  year 
invalidates  the  patent. 

Patents  granted  for  more  than  five  years  have  a  period  of  two 
years  allowed  for  working  them ;  in  both  cases  the  owner  of  the 
patent  should,  in  case  of  inaction,  show  the  reason  of  neglect ; 
but  the  want  of  funds  is  not  recognised  as  a  valid  excuse. 

Every  deed  of  transfer  or  assignment  of  a  patent  is  registered 
upon  the  grant  of  the  original  patent,  and  published  in  the 
official  journal ;  such  assignment  is  not  valid  as  regards  a  third 
party,  excepting  from  the  date  of  registration  in  the  Patent 
Office. 

The  application  for  a  patent  addressed  to  the  Minister  of 
Agriculture,  Industry,  and  Commerce  must  contain:  (1)  The 
name  and  surname,  and  residence  of  the  applicant,  and  of  his 
attorney  or  agent ;  (2)  a  short  and  precise  description,  in  the 
form  of  a  title,  of  the  nature  and  object  of  the  discovery  ;  (3)  the 
length  of  the  term  for  which  the  patent  is  desired. 

To  the  application  should  be  annexed :  (1)  Three  copies  of  a 
description  of  the  invention  in  French  or  Italian ;  (2)  explanatory 
drawings  or  models  (also  three  copies) ;  (3)  a  receipt  proving  the 
payment  of  the  taxes ;  (4)  a  list  of  the  documents  ;  (5)  power  of 
attorney  legalised  by  the  Consul  of  Italy. 

An  Italian  patent  becomes  void :  (1)  If  it  has  reference  to  any 


448  JAi 

of  tin  inventions  proscribed  by  the  law;  (2)  if  th«-  title  fraudu- 
lently si  ts  forth  another  object  than  the  true  object  of  the  invention 
or  discovery ;  (3)  if  the  description  does  not  fully  and  faithfully 
point  out  the  necessary  means  of  carrying  out  the  invention ;  (4) 
if  tin*  invention  is  not  new  or  useful ;  (5)  if  the  patent  hat  formed 
the  subject  of  a  certificate  granted  to  a  third  party  for  modifi- 
cation of  an  invention  within  the  six  months  reserved  to  the 
author  or  his  assigns ;  (6)  if  the  tax  be  not  paid  within  the  three 
months  from  the  date  at  which  it  is  <1  t  tlu  patent  has  not 

been  worked  within  the  prescribed  period ;  (8)  if  the  patent  has 
been  granted  to  any  other  than  the  inventor  or  his  agent 

JAPAN. 

The  following  regulations  as  to  patents  are  included  in  the 
Imperial  Proclamation  No.  84,  dated  December  18,  1888. 

Inventors  must  apply  for  protection  to  the  Minister  of  Agri- 
culture and  Commerce,  who  will  give  the  necessary  certificates. 
Articles  of  food,  drink,  fashion,  or  medicine  are  not  patentable. 
Three  copies  of  the  specification  with  drawings  (if  necessary) 
must  accompany  the  application,  of  which  two  copies  are  required. 
All  the  persons  connected  with  the  invention  must  sign  the  papers. 
Patent  rights  are  granted  for  five,  ten,  or  fifteen  years. 

Patents  for  inventions  applicable  to  war  purposes,  or  those 
the  general  use  of  which  is  deemed  important,  can  be  refused,  or 
have  conditions  imposed  by  the  Minister. 

Articles  that  are  improvements  upon  existing  patents  can  only 
be  protected  with  the  consent  of  the  original  patentee,  but  if  this 
consent  is  not  accorded  the  Minister  has  still  power,  if  he  con- 
siders the  refusal  obstructive  to  the  improvement  of  the  invention, 
to  grant  the  improver  special  permission  to  use  the  original  inven- 
tion together  with  the  improvement,  in  which  cases  the  improvers 
will  be  ordered  to  pay  appropriate  sums  of  money  to  the  original 
patentee. 

Articles  patented  must  be  marked  with  a  mark  settled  by  tin- 
Minister,  and  anyone  neglecting  to  mark  the  articles  cannot 
obtain  damages  from  infringers. 

Provisions  are  made  for  the  Patents  Bureau  acting  as  arbi- 
trators in  questions  connected  with  the  rights  of  patentees. 

Patents  will  become  void  when  articles  made  according  to 
the  patented  invention  are  imported  and  sold,  or  the  patentee 
ignores  importation  and  sale  which  infringes  his  rights,  or  when 
without  good  reason  the  invention  has  not  been  practically  applied 


LIBERIA— LUXEMBURG  449 

in  public  within  three  years  from  the  date  of  the  certificate,  or 
when  the  working  is  suspended  for  three  years  without  good  reason. 

The  fee  payable  on  applications  for  patents  is  about  12s., 
and  in  addition,  on  the  issue  of  the  certificate,  the  fees  for  five 
years  amount  to  about  2£.,  for  ten  years  about  31. ,  and  for  fifteen 
years  about  4L 

Infringers  are  liable  to  imprisonment  (not  exceeding  one  year) 
and  to  fines  not  exceeding  40/. 

All  transfers,  licences,  and  other  dealings  with  patents  must 
be  registered.  The  patentee  has  power  to  rectify  omissions  or 
misstatements  in  his  original  application  and  specification.  In 
practice  the  Japanese  authorities  refuse  a  patent  to  anyone  who 
has  patented  the  invention  in  another  country. 

LIBEBIA. 

An  Act  of  the  Senate  and  House  of  Eepresentatives  of  the 
Eepublic  of  Liberia,  by  Act  of  December  23,  1864,  has  provided 
for  the  protection  of  inventions  within  the  republic. 

This  Act  provides  for  the  establishment  of  a  Patent  Office 
under  the  control  of  the  Secretary  of  State.  All  patents  are  issued 
in  the  name  and  under  the  seal  of  the  republic,  and  signed  by 
the  President  and  the  Secretary  of  State. 

Citizens  of  Liberia  or  aliens  may  obtain  patents  on  applica- 
tion in  writing  to  the  Secretary  of  State  accompanied  by  proper 
specifications  and  drawings  ;  the  Secretary  of  State  having  made 
an  examination  of  the  alleged  new  invention,  and  being  satisfied 
as  to  its  novelty,  will  issue  a  patent  therefor.  Aliens  who  have 
obtained  patents  must  put  the  inventions  into  actual  operation 
in  the  republic  within  three  years  from  the  grant.  The  fee 
payable  by  a  citizen  on  application  for  a  patent  is  25  dollars,  by 
an  alien  50  dollars.1 

Patents  are  assignable  in  whole  or  in  part,  and  all  assignments 
and  business  must  be  registered  in  the  office  of  the  Secretary  of 
State  within  one  year  from  their  execution. 

Proceedings  for  infringement  must  be  taken  in  the  Supreme 
Court  of  the  Republic. 

LUXEMBURG. 

Patents  are  granted  under  the  law  of  June  30, 1880,  for  the  term 
of  fifteen  years  upon  payment  of  an  annual  tax  of  10  francs  for 

1  The  specifications  and  drawings  are  open  for  public  inspection  in  the 
office  of  the  Secretary  of  State,  and  certified  copies  may  be  obtained. 

G  ( t 


450  MEXICO 

the  first  year ;  20  francs  for  the  second  year,  and  to  on,  progim 
ing  at  the  rate  of  10  francs  for  each  year.  Patents  of  addition 
are  also  granted,  expiring  with  the  original  patent.  No  prolonga- 
tions are  granted  beyond  the  original  term.  Patents  are  granted 
without  examination  and  at  the  risk  of  the  applicants.  Tin 
\,  mion  protected  must  be  put  in  operation  in  Luxemburg  within 
three  years  from  the  date  of  the  patent  Patents  can  be  assigned ; 
the  deed  of  assignment  must  be  registered.  Applicants  for  patent* 
must  present  tlu  ir  petitions,  accompanied  by  descriptions  of  the 
invi  inioii  in  French  or  German,  and  drawings,  models,  or  speci- 
mens, when  necessary  to  the  comprehension  of  the  invention. 
Patents  become  void  by  default  in  payment  of  the  taxes  within 
three  months  of  the  time  fixed ;  or  if  a  similar  patent  is  not 
applied  for  within  three  months  in  the  states  with  which  the 
Grand  Duchy  is  allied  by  Customs  Treaty.  The  patent  will  also 
be  void  if  the  invention  is  not  good  subject-matter  for  patent ; 
if  the  description  of  the  invention  lodged  is  insufficient,  or  does 
not  give  to  the  best  of  the  inventor's  ability  the  means  for  carrying 
out  the  invention.  Articles  made  abroad  according  to  the  patent 
can  be  imported  into  Luxemburg  without  invalidating  the  patent. 
Infringers  of  patents  are  liable  to  payment  of  penalties  varying 
from  100  to  2,000  francs,  irrespective  of  damages. 

•  MEXICO. 

A  decree  of  May  7, 1882,  governs  the  grant  of  patents  in  Mexico. 
v  discovery  or  new  invention  can  be  patented  in  Mexico. 
Patents  are  granted  to  the  first  introducer  of  a  new  invention 
which  has  not  been  used  in  Mexico ;  and  applications  for  patents 
by  inventors  who  have  already  foreign  patents  for  the  same 
objects  are  accorded  a  preference  over  others,  but  this  preference 
does  not  extend  to  cases  where  the  foreign  patent  has  lapsed. 
Pharmaceutical  compositions,  plans  for  working  estates,  or  for 
financial  combinations,  and  the  application  of  known  motors  to 
industrial  purposes  also  known  are  not  patentable. 

Patents  are  granted  for  six  or  ten  years.  Patents  for  improve- 
ments are  granted  for  the  time  which  remains  of  the  original 
patent,  if  such  duration  exceeds  six  years  ;  if  such  duration  is  less 
than  for  six  years,  patents  for  importation  are  granted  for  only 
five  years. 

Every  applicant  for  a  patent  must  address  to  the  Minister  of 
Commerce  a  petition  setting  out  that  the  petitioner  is  either  the 
inventor  or  is  the  assignee  of  the  inventor,  together  with  a  descrip- 


MEXICO  451 

tion  of  the  invention,  and  such  drawings,  specimens,  or  models 
as  may  be  necessary  for  the  proper  comprehension  of  the  inven- 
tion. 

The  application  must  be  limited  to  one  principal  object,  with 
such  accessories  as  are  necessary  for  carrying  out  the  invention. 
This  description  must  be  written  in  Spanish,  and  must  be  without 
alterations  or  corrections.  The  drawings  must  be  made  in  ink 
and  to  scale,  and  must  be  in  duplicate.  All  the  documents  must 
be  signed  by  the  inventor  or  by  his  attorney.  The  duration  of 
the  patent  will  commence  from  the  date  of  the  grant. 

These  documents  are  examined  by  officials,  and  the  applica- 
tions are  then  published  in  the  official  and  other  journals,  and 
oppositions  to  the  grants  can  be  made  within  two  months  from 
such  publication.  The  Government  does  not  guarantee  the 
utility,  novelty,  or  validity  of  the  patent. 

The  Government  publishes  every  three  months  the  lists  of 
patents  granted.  The  description  and  drawings  of  the  invention 
can  be  modified  at  any  time  during  the  duration  of  the  patent. 
Patents  of  addition  will  be  granted  for  improvements  upon  the 
original  invention.  These  patents  for  improvements  can  be 
granted  to  the  original  inventor  or  his  assigns  only,  for  the  first 
year  of  the  patent. 

Patents  can  be  assigned  in  whole  or  in  part,  and  assignments 
must  be  registered.  Assignees  are  not,  however,  entitled  to  patents 
for  improvements  without  assignments  of  those  improvements. 
The  Minister  of  Commerce  publishes  every  year  a  catalogue  of 
the  specifications  with  illustrations  of  the  drawings.  Patents 
granted  will  be  annulled  if  the  alleged  discovery  is  found  to  be 
old ;  if  it  does  not  come  within  the  terms  of  the  law  for  which 
patents  are  to  be  granted  ;  if  it  is  contrary  to  public  policy ;  if  the 
specification  upon  which  the  grant  has  been  made  is  fraudulently 
expressed  in  indicating  an  object  different  from  the  true  object  of 
the  invention  ;  if  the  description  lodged  is  insufficient  to  enable 
the  invention  to  be  put  in  operation  ;  if  the  invention  is  not  put 
into  operation  in  Mexico  within  two  years  from  the  date  of  the 
grant,  or  if  its  working  is  interrupted  for  two  years,  unless  the 
cause  of  inaction  is  satisfactorily  accounted  for  ;  and  also  if  the 
patentee  introduces  into  the  country  the  patented  articles  manu- 
factured abroad  (except  under  the  provisions  of  the  International 
Convention).  The  permission  of  the  Minister  can,  however,  be 
obtained  for  the  introduction  of  models.  All  patented  articles  must 
bear  the  word  '  Patented,'  and  '  Sans  garantie  du  Gouvernement. 

Patents  are  now  obtained  without  difficulty  in  Mexico  when  the 

o  o  2 


\KAGUA-N'  l:\\  \Y 

applications  are  made  in  proper  form,  and  tho  in\  •  pre- 

sented by  a  competent  agent. 


Tho  resolutions  of  t)  '   >rtes  have  by  decree  been 

declared  in  force  in  this  republic.     I'.;.  \  rttt    '          '  «  rson 

who  invents,  imports,  or  introduces  an  invention  may,  by  ap- 
plication to  the  prefect  of  the  department  or  tin-  muni.  ipalit\  , 
obtain  a  certificate  granting  him  an  right  to  such  in- 

Minion.  The  duration  of  tin-  privilege  is  to  an  inv«-nt<>r  t«-n 
years,  to  an  improver  seven  years,  and  to  an  intnNlucer  five  years. 
Tin  so  U-rms  may  be  extended  by  tin- 

in\t  ntion  must  be  worked  in  the  republic  within  two  years  or 
the  privilege  will  cease. 

In  practice,  however,  the  rules  of  the  decrees  are  not  closely 
followed,  hut  mi  urhitrary  power  is  vested  in  Congress,  which 
grants  a  patent  or  withholds  it  as  it  sees  tit. 

•NORWAY. 

Patents  for  new  inventions  beneficial  to  industry  are  granted 
in  Norway  under  a  law  of  June  16,  1885.  An  invention  is  not 
considered  to  be  new  if  before  the  application  for  a  patent  it  H 
already  so  far  known  that  it  can  be  carried  out  by  experts,  hut 
publication  in  print  or  by  puhlic  exhibition  for  a  period  not  exceed- 
ing six  months  before  the  application  will  not  prevent  the  grant. 

The  applicant  must  be  the  first  inventor,  or  a  person  who  has 
obtained  the  right  from  him.  The  proprietor  of  a  patent  has  for 
a  period  of  two  years  from  the  date  of  his  application  the  sole 
right  to  obtain  a  patent  for  improvements  or  additions  to  the 
invention. 

Patents  are  granted  for  fifteen  years  from  the  date  of  the  appli- 
cation. 

Improvements  or  additions  may  be  protected  either  by  in- 
dependent patents  or  by  patents  of  addition  expiring  with  the 
original  grant. 

A  fee  of  80  crowns  (  =  II.  13s.  Id.)  is  to  be  paid  on  lodging 
any  application,  and  an  annual  tax  is  also  payable  of  10  crowns 
(  =  lls.  )  for  the  second  year,  and  increasing  5  crowns  (  =  5s.  Gd.) 
each  year. 

The  patent  has  no  effect  against  persons  who  have  used  the 
invention  or  have  made  the  necessary  preparations  for  the  use  of 
the  same  before  the  application. 


ORANGE  FREE  STATE  453 

A  patented  invention  may  be  used  for  the  service  of  the 
Government  without  consent  of  the  patentee,  but  in  that  case  the 
patentee  is  entitled  to  compensation,  to  be  paid  by  the  Govern- 
ment, the  amount  of  which,  in  case  of  dispute,  is  settled  by  arbitra- 
tion ;  and  a  patented  invention  of  essential  value  to  any  particular 
trade  or  industry  may  be  appropriated  to  private  use,  but  the 
patentee  is  entitled  to  compensation,  to  be  paid  by  the  person 
using  the  invention,  the  amount  of  which,  in  case  of  dispute,  is 
settled  by  arbitration. 

The  examination  of,  and  decision  upon,  applications  rests 
with  a  Patent  Commission,  consisting  of  a  president  qualified  for 
the  bench,  and  five  members  (at  least)  experts  in  technical  pur- 
suits. 

Applicants  must  lodge  with  the  Patent  Commission  a  petition 
and  description  and  drawings  (in  duplicate)  of  the  invention  ;  if 
the  applicant  is  not  resident  in  Norway  he  must  appoint  a 
resident  attorney  to  represent  him.  The  specification  must  con- 
clude with  a  definite  statement  of  what  the  applicant  considers  to 
be  his  invention  and  wishes  to  protect. 

If  the  application  is  approved  it  is  advertised  ;  the  papers  are 
open  to  the  public  inspection  during  eight  weeks,  and  any  person 
may  lodge  an  opposition  to  the  grant ;  the  Commission  then  decides 
upon  the  application,  and  if  the  applicant  is  dissatisfied  with  the 
decision  he  may  apply  for  the  reconsideration  of  the  matter,  and 
may  also  appeal  to  a  superior  Patent  Commission  of  seven 
members  appointed  for  that  purpose. 

The  invention  must  be  put  into  operation  in  Norway  within 
three  years  from  the  date  of  the  grant,  and  the  working  must  not 
be  afterwards  discontinued  for  one  year. 

A  register  of  assignments  is  kept  in  which  all  the  dealings 
with  patents  must  be  entered. 

Actions  may  be  brought  for  the  repeal  of  the  patent,  and 
against  infringers,  from  whom  damages  may  be  obtained  by  the 
patentee  as  well  as  penalties  by  the  Crown. 

Articles  made  abroad  according  to  the  patent  can  be  imported 
without  invalidating  the  grant. 

ORANGE  FREE  STATE. 

The  Legislative  Council  have,  by  an  Ordinance  No.  10  of  1888, 
repealed  the  Ordinance  No.  12  of  1884,  and  have  established 
a  law  of  patents  similar  to  that  of  the  Transvaal.  (See  page 
464.) 


454  PARAOUAY-PERU 

The  fees  for  obtaining  patents  are  also  similar,  except  that  the 
fee  payable  on  sealing  the  patent  is  not  less  than  more 

than  601.    All  documents  most  be  in  the  Dutch  language,  and 
applications  have  to  be  advertised  at  the  applicant's  expense. 

PAJUOUAY. 

There  is  no  special  law  enabling  inventions  to  be  patented  in 
this  country,  but  patents  can  be  obtained  by  inventors  whether 
rin/.-ns  or  strangers,  and  also  by  the  first  introducers  of  i: 
tions  from  abroad.    Patents  can  be  assigned  in  whole  or  in  part. 

All  new  discoveries  and  improvements  are  patentable,  and  no 
examination  is  instituted  prior  to  the  grant. 

Patents  date  from  the  day  of  the  grant.  The  term  fixed 
varies  from  five  to  ten  years,  and  is  fixed  by  Government  decree. 
Prolongations  of  the  original  terms  can  be  obtained  where  the 
i  i iv umstances  justify  such  prolongations. 

Legal  proceedings  can  be  taken  against  the  persons  infringing 
the  patent. 

PEBU. 

Article  27  of  the  Constitution  declares  useful  discoveries  to  be 
the  property  of  the  authors,  and  that  introducers  may  enjoy  like 
privileges  for  limited  periods  granted  to  them. 

The  Law  of  January  28,  18G9,  repeats  the  same  declaration, 
but  enacts  that  the  right  must  be  established  by  a  certificate  or 
patent.  The  duration  of  patents  is  not  to  exceed  ten  years,  and 
a  fee  of  about  20/.  per  annum  is  payable  to  the  fund  of  public 
works  of  the  province  in  which  the  invention  is  exercised  or 
established. 

The  application  must  comprise  a  description  of  the  invention, 
with  plans  or  models,  and  a  clear  statement  of  the  principal  ob- 
ject, with  details  and  an  explanation  of  the  application,  the  term 
sought  for,  and  the  nature  of  the  security  offered  for  the  realisa- 
tion of  the  project. 

If  a  foreigner  is  an  applicant,  he  must  renounce  all  diplomatic 
intervention  and  submit  himself  absolutely  and  irrevocably  to  the 
laws  of  the  republic. 

An  official  inquiry  is  made  in  each  case,  and  the  Ministry  will 
grant  or  refuse  the  patent  upon  the  result. 

Prolongations  and  modifications  or  alterations  can  only  be 
granted  by  legislative  resolution. 

The  patents  are  null :  If  the  discovery,  invention,  or  applica- 


POKTUGAL  455 

tion  is  not  new,  or  the  application  is  not  for  new  industrial  pro- 
ducts or  new  applications  of  those  already  known ;  if  based  upon 
theoretical  or  scientific  principles,  methods,  systems,  or  disco- 
veries, the  industrial  application  of  which  is  not  indicated ;  if 
the  discovery  appears  to  be  contrary  to  law  or  order  ;  if  the  appli- 
cation was  fraudulent ;  or  if  the  invention  cannot  be  carried  out 
according  to  the  description  lodged. 

The  invention  is  not  to  be  deemed  new  if  it  had  sufficient 
publicity  to  be  put  in  practice  in  Peru  or  abroad  prior  to  the  date 
of  application. 

The  patentee  will  lose  his  rights  if  the  annuity  is  not  paid,  if 
he  does  not  work  the  invention  within  two  years  from  the  date 
of  the  grant,  and  if  he  imports  from  abroad  articles  made  accord- 
ing to  the  patent. 

Persons  interested  may  demand  the  nullity  or  cessation  of  the 
patent,  and  such  demands  will  be  considered  by  the  Ministry. 

*  PORTUGAL. 

Eoyal  decrees,  dated  December  31,  1852,  and  March  17,  1868, 
regulate  the  law  of  patents  in  Portugal,  including  the  Portuguese 
possessions  abroad.  Their  principal  provisions  are  to  the  follow- 
ing effect : — 

Authors  of  new  inventions,  whether  native  or  foreign,  are 
entitled  to  secure  an  exclusive  right  to  them  by  patent ;  but  the 
patent  will  be  no  guarantee  of  the  reality,  priority,  or  merit  of  the 
invention.  An  invention  can  be  patented,  though  in  use  in  foreign 
countries,  if  it  be  new  in  Portugal. 

The  duration  of  a  patent  privilege  cannot  exceed  fifteen  years  ; 
but  the  inventor  may  obtain  it  for  a  less  period,  from  one  year 
upwards.  To  inventors  who  have  already  obtained  a  patent  in  a 
foreign  country,  no  longer  term  will  be  granted  than  is  sufficient 
to  make  up  fifteen  years  from  the  date  of  the  foreign  patent.  The 
importer  of  an  invention  (not  being  the  inventor  himself)  can  only 
obtain  a  patent  for  five  years. 

Prolongations  are  granted  when  demanded  within  the  term  of 
the  first  demand. 

On  applying  for  a  patent,  an  inventor  must  deliver  to  the 
proper  office  an  exact  description,  under  seal,  of  the  principles, 
means,  and  processes  which  constitute  the  invention,  with  the 
necessary  plans  in  duplicate,  sections,  and  drawings. 

A  patent  will  not  be  allowed  to  comprise  more  than  one  sub- 
ject-matter of  invention. 


456  nmu 

Articles  nude  abroad,  according  to  the  invention,  can  U> 
portal  \\ith. -tit  invitliduting  the  grant,  but  patentee*  are  required 
to  work  tli.  ir  patents  officially  in  Portugal  w  ithin  two  yean  from 
the  date  of  the  patent,  and  t!.«  working  mast  not  cease  ft)! 
yean.    Th.  law  .I.*  -  not.  ho\\«  >. >  .•  actual  const: 

the  country.     An  iinjx  <1  by  an  inde- 

pendent  person  as  being  made  in  accordance  with  the  specification 
is  considered  to  be  a  sufficient  working,  whilst  advertisements  in 
the  newspapers  are  held  to  be  nufli.  nee  of  subsequent 

workings. 

A  tax  of  5,000  reis  (about  28*.)  is  imposed  in  respect  of  each 
year  of  the  patent,  and  is  paid  in  adv» 

•  nt  rights  pass  by  assignment  or  by  will. 

A  patent  becomes  void  if  the  invention  In-  not  carried  into 
effect  within  two  years,  or  if  the  manufacture  IK?  adjudged  a 
nuisance  by  a  competent  tribunal. 

RUSSIA. 

The  law  as  to  privileges  for  inventions  in  Russia,  including 
Poland  and  Siberia,  but  excluding  Finland,  was  declared  by  an 
imperial  decree  of  June  17,  1812.     On  November  ±J.  1838,  the 
of  this  decree  were  altered,  and  amendments  were  made : 
iiber  2.  IKMU;  JulyS,  1887;  October:?:;.  1MO;  Augu- 
1H45;  July  7,  Is.V-i:    May  -J-.  1-..-J  :  .July  11.  1-,,|  ;   (  i,  •    i  . 
18GI  .i*r  20,  1864  ;  Februar  7  :   Aj -ill  ±i.  1868; 

March  80, 1870  ;  June  7, 1H7 -  1 N  inber  80,  1872 ;  January  10, 
1878  ;  October  20,  1874;  and  April  27,  1- 

The  privilege  granted  for  discoveries,  inventions,  or  improve- 
ments in  arts  and  manufactures  is  founded  upon  the  letters  patent 
and  a  certificate  (obtained  on  presenting  a  petition  to  Government 
accompanied  by  a  full  description  of  the  invention,  with  the 
drawings  belonging  to  it,  and  paying  the  Government  tax), 
which  certificate  states  that  the  invention  therein  mentioned  was 
presented  at  such  a  date  and  hour  to  the  Government,  and  that 
the  Government  tax  has  been  paid.  The  term  of  the  patent 
begins  from  the  day  of  issue  of  the  letters  patent,  but  infringen 
may  be  prosecuted  from  the  date  of  the  certificate  of  application. 

Patent  applications  are  subject  to  an  investigation  into  the 
novelty,  and  partly  into  the  merits  of  the  invention. 

No  patents  are  granted  for  munitions  of  war  (as,  for  instance, 
guns,  projectiles,  torpedoes,  etc.)  unless  adapted  to  other  purposes 
(as,  for  instance,  sporting  fire-arms,  metallic  cartridges,  etc.),  when, 


EUSSIA  457 

the  grant  will  be  made  subject  to  the  rights  of  the  Government  to 
use  the  same  without  compensation. 

The  Government  does  not  guarantee  that  the  invention  belongs 
to  the  person  who  makes  the  application ;  it  only  certifies  that 
for  the  same  invention  no  privilege  has  been  granted  to  anybody 
in  Eussia  before. 

The  privilege  granted  by  the  Government  does  not  prevent 
the  true  inventor  from  proving,  in  legal  form,  that  the  invention 
does  not  belong  to  the  person  who  obtained  the  patent  of  in- 
vention. 

Until  the  ownership  of  the  invention  is  contested  the  person 
to  whom  the  privilege  was  granted  has  a  right : 

1.  To  the  absolute  property  hi  the  invention  for  the  specified 
time. 

2.  To  use  the  invention  himself,  and  to  sell  its  results  to  the 
public,  or  to  transfer  the  privilege  to  another  person. 

3.  To  prosecute  persons  infringing  the  privilege  in  the  courts 
of  law,  and  to  recover  an  indemnity  for  the  loss  sustained  by  the 
infringement. 

4.  To  treat  as  an  infringement  the  making  of  articles  in  a 
similar  manner,  even  with  improvements  upon  them,  as  long  as 
the  essential  parts  of  the  first  discovery  are  copied. 

The  applicant  for  a  patent  privilege  must  deliver  to  the  Gov- 
ernment an  exact  description  of  his  invention,  with  all  essential 
details,  and  the  mode  of  carrying  it  into  effect ;  and  also  furnish 
the  necessary  plans  and  drawings,  not  keeping  back  anything 
requisite  to  be  known  to  enable  the  invention  to  be  carried  out. 
The  inventor  must  state  what  he  claims  as  novel.  If  the  invention 
relates  to  sporting  fire-arms,  or  surgical  instruments,  a  model  or 
specimen  will  be  required  in  most  cases. 

Inventions  made  in  foreign  countries  may  be  patented  in 
Eussia  when  no  detailed  description  has  been  published,  and 
when  the  inventions  have  not  been  already  introduced  into  the 
Eussian  Empire  and  the  foreign  patents  have  not  expired. 

A  patent  for  an  imported  invention  has  the  same  validity  as 
one  granted  for  an  invention  made  in  Eussia,  until  it  is  shown 
that  the  invention  had  been  brought  into  use  before  the  grant 
or  that  it  had  been  described  in  published  books  or  papers  in  such 
a  way  that  it  could  have  been  carried  into  effect  without  the 
patentee's  description. 

Patent  privileges  for  original  inventions,  whether  made  in 
Eussia  or  in  a  foreign  country,  patented  or  not  patented  abroad, 
are  granted  to  the  Eussian  or  foreign  inventor,  or  his  assignee,  for 


1  Vs  SAN  SALVADOR 

three,  five,  or  ten  yean  (the  extreme  limit),  at  the  option  of  the 
applicant.  Patent  privileges  applied  for  by  the  mere  importer  for 
inventions  still  remaining  under  patent  protection  abroad  are 
granted  for  one,  two,  three,  four,  five,  or  six  yean  (the  extreme 
limit),  at  the  option  of  tin  applicant,  but  cannot  endure  beyond 
the  expiration  of  the  patent  taken  out  abroad  by  the  inv< 
himself.  The  Government  charges  amount  on  patents  of  inven- 
tion  for  three  years  to  00  roubles,  for  five  years  to  150  roubles, 
and  for  ten  years  to  450  roubles  ;  whilst  for  patents  of  importa- 
tion the  Government  charges  GO  roubles  for  each  year  of  the 
duration  of  the  patent.  If  the  application  be  refused  the  Govern- 
ment tax  is  refunded,  with  the  exception  of  from  11  to  15  roubles 
for  the  advertisements  of  the  application  in  the  newspapers. 

A  patent  will  be  void  when  it  is  shown  to  the  proper  tribunal 
that  a  patent  of  invention  has  been  applied  for  without  the  con- 
sent of  the  true  inventor,  or  that  tin-  invention  has  been  already 
practised  in  Russia,  or  that,  at  the  time  of  the  presentation  of  a 
petition  fora  patent,  tin*  invention  had  been  previously  described 
in  books  or  periodicals  published  in  Russia  or  elsewhere,  so  that 
it  might  have  been  carried  into  effect  without  further  descrip- 
tion. It  will  also  be  void  where  it  is  impossible  to  arrive  at  tin- 
promised  result  by  following  the  directions  of  the  patentee,  or  if 
tin-  certificate  of  working  has  not  been  filed  within  the  time  pre- 
scribed. 

>  power  of  attorney  is  required  for  the  person  applying  for 
the  patent  in  case  of  the  absence  of  the  inventor  or  importer. 

No  prolongation  of  the  term  originally  granted  can  be  ob- 
tained. For  improvements  in  a  patented  invention  a  new  patent 
must  be  applied  for.  An  invention  for  which  a  patent  has  been 
obtained  must  be  carried  into  effect  in  Russia  within  one  quarter 
of  the  term  for  which  the  patent  was  granted,  and  within  six 
months  after  this  a  certificate  of  working  from  some  local  autho- 
rity must  be  filed  at  the  Ministry  which  issued  the  patent.  To 
prove  the  working  of  the  patented  article,  it  may,  if  it  be  a  machine, 
be  imported,  but  if  the  patent  is  for  a  process,  the  manufacture 
must  be  carried  out  in  Russia. 


SAX  SALVADOR  (CKXTRAL  AMERICA). 

The  Constitution  gives  power  to  the  executive  to  grant  privi- 
leges to  the  authors  of  useful  inventions,  but  no  special  law  exists 
for  regulating  the  grant  of  such  privileges.  It  is  customary, 


SPAIN  459 

however,  for  the  executive  in  the  exercise  of  its  prerogative  to 
follow  the  practice  of  civilised  Governments. 


*  SPAIN. 

INCLUDING   THE    SPANISH    COLONIES   OF    CUBA,    POETO    EICO,   AND    THE 
PHILIPPINE    ISLANDS. 

A  greatly  improved  law  with  respect  to  patents  for  inventions 
came  into  operation  on  August  1,  1878. 

Under  this  law  facilities  are  afforded  for  the  introduction  into 
Spain  of  numerous  inventions  which  the  restrictions  and  cost  of 
obtaining  patents  under  the  old  law  precluded.  A  valuable 
feature  of  the  present  law  is,  that  one  patent  includes  not  only 
Spain,  but  the  colonies  of  Cuba,  Porto  Eico,  and  the  Philippine 
Islands,  for  each  of  which  a  separate  and  most  costly  patent  was 
formerly  requisite.  To  render  the  patent  valid  in  the  Spanish 
colonies  it  must  be  registered  in  the  Colonial  Office  at  Madrid. 

The  rights  of  foreigners  as  regards  obtainment  of  patents  are 
the  same  as  those  of  natives. 

Two  classes  of  patents  are  granted,  one  to  inventors,  and 
another  to  those  who,  without  being  inventors,  introduce  or 
import  a  new  industry  into  Spain  or  the  colonies. 

The  proprietorship  of  a  patent  is  hereditary,  and  can  be  sold 
or  negotiated,  just  as  any  other  property,  according  to  the  existing 
laws  in  Spain. 

Patents  are  granted  to  one  or  more  individuals,  or  to  a  society 
or  company. 

Patents  of  invention  are  granted  to  all  who  solicit  them, 
without  previous  examination  as  to  the  novelty  or  usefulness  of 
the  invention. 

Applicants  for  full-term  patents  in  Spain  must  file  their 
petition  before  their  inventions  are  published  or  made  known 
elsewhere,  so  that  the  invention  may  be  considered  new  in  Spain ; 
in  such  cases  the  patent  will  be  granted  for  twenty  years.  But 
if  the  application  be  delayed  until  after  the  publication  has  taken 
place  in  any  other  country  the  applicant  is  still  entitled  to  a 
ten  years'  patent  in  Spain,  provided  that  two  years  have  not 
elapsed  since  such  publication.  Should  more  than  tioo  years  have 
elapsed  he  is  then  in  the  same  position  as  an  importer  or  intro- 
ducer of  the  invention,  and  can  only  obtain  a  five  years1  patent. 
The  introducer  not  being  the  inventor  is  not  entitled  to  a  grant 
for  more  than  five  years. 


•I  Gil  UN 

If  the  applicant  obtains  a  longer  time  than  he  is  legally  entr 
to,  he  incurs  the  risk,  on  the  intervention  of  a  third  person,  of  tin- 
Courts  declaring  the  patent,  ip$o  facto,  null  ami  v.,i.|.  15m  the 
patentee  would  be  entitl.  .1  to  present  a  fresli  application  for  the 
term  then  open  to  him  under  the  law,  pmvi.lt  .1  n»  <>thi-r  appli- 
cation had  been  filed  in  the  meantime. 

The  annual  taxes  are  10  pesetas  (10  francs)  for  the  first  year ; 
20  pesetas  (20  francs)  the  second  year ;  80  pesetas  (80  francs)  the 
third  year,  and  so  on  successively,  each  year  10  pesetas  (10 
francs)  more  than  the  previous  year. 

The  following  documents  are  needed  on  application  for  a 
patent  :— 

1st.  A  power  of  attorney  in  Spanish,  indicating  the  name  and 
residence  of  the  person  in  whose  name  the  patent  is  to  be 
granted. 

lind.  A  complete  specification,  explaining  tin-  invention  and 
the  points  claimed.  The  patent  will  be  granted  on  the  point  or 
points  specified  in  the  claims.  The  references  to  weights  or 
measures  in  the  specifications  must  be  made  in  accordance  with 
the  French  metrical  system. 

3rd.  The  drawings  must  be  on  tracing  cloth,  in  black  ink. 
without  colours  or  colouring,  on  the  French  metrical  scale,  and 
in  duplicate. 

If,  on  the  Patent  Office  authorities  examining  the  documents 
and  papers,  it  should  be  found  that  they  are  incomplete,  or  not 
presented  according  to  this  law,  two  months  will  be  allowed  to  the 
applicant  to  correct  the  error  if  the  inventor  resides  in  Europe ; 
four  months  if  he  resides  in  America ;  and  eight  months  if  he 
resides  in  Asia.  No  secrecy  will  be  observed,  as  formerly,  with 
regard  to  the  patents  granted.  The  specifications  and  drawings 
are  open  to  the  public  in  the  Patent  Office  after  the  grant  has 
been  made. 

Certificates  of  addition  are  granted.  During  the  whole  term 
of  a  patent,  the  owner,  his  heirs,  or  the  person  representing  his 
rights  can  obtain  protection  for  improvements  on  or  additions 
to  his  original  patent.  No  annuities  are  payable  on  certificates 
of  addition,  but  the  further  improvements  protected  must  be  put 
into  working  in  the  same  way  as  the  original  patent,  and  either 
at  the  same  time  or  separately. 

The  certificates  of  addition  will  be  granted  and  considered  as 
parts  of  the  original  patents.  They  are  solicited  in  the  same 
manner  as  the  patent,  and  terminate  when  it  terminates.  In- 
stead of  soliciting  a  certificate  of  addition,  a  new  patent,  inde- 


SPAIN  461 

pendent  of  the  principal  one,  can  be  obtained  for  improve- 
ments. 

The  sale,  cession,  or  negotiation  of  patents  can  be  made 
before  a  notary  in  any  country.  If  the  cession  is  made  in  Spain 
a  special  power  must  be  sent  for  it.  If  the  cession  is  made  before 
a  foreign  notary,  out  of  Spain,  the  document  or  contract  must  be 
made  directly  in  Spanish,  or  must  be  officially  translated  at  the 
Spanish  Legation  or  Consulate. 

All  documents  sent  to  the  Patent  Office  department  must  be 
legalised  at  the  Spanish  Legations  or  Consulates  of  the  places 
whence  they  come.  In  the  contracts  of  sale  or  cession,  a  certifi- 
cate from  the  Patent  Office  of  Spain  must  be  transcribed  to  prove 
that  the  annual  taxes  on  the  patent  are  paid  up  to  the  date  of  the 
contract,  and  that  the  patent  is  in  full  force,  and  that  the  patentee 
has  not  disposed  of  his  interest.  The  sale  or  cession  of  the  patents, 
with  all  the  requisite  formalities,  must  be  registered  in  the 
Gobierno-Civil  at  Madrid. 

Two  years  are  allowed  for  the  official  working  of  the  patent 
in  Spain,  but  this  term  can  be  prorogued  by  a  special  law  passed 
in  the  Cortes  to  that  effect ;  this  can  only  be  obtained  under  very 
exceptional  circumstances,  with  much  difficulty  and  at  great  cost. 

Patents  will  be  declared  void  when  their  owner  ceases  to  pay 
the  annual  charges,  or  when  he  has  not  proved  officially  that  he 
has  worked  the  patent  within  the  two  years. 

Patents  may  be  annulled  at  the  instance  of  a  third  person  and 
by  the  sentence  of  a  Spanish  court  in  case  it  is  proved  the 
invention  was  not  within  the  terms  of  the  law  when  applied  for, 
or  if  the  specification  does  not  sufficiently  describe  the  manner 
in  which  the  invention  is  to  be  worked. 

A  patent  may  also  be  annulled  at  the  instance  of  a  third 
person  if  it  can  be  proved  that  the  invention  has  not  been  put  into 
operation  within  a  year  and  a  day  from  the  date  of  the  patent. 
Advertisements  of  the  invention  inserted  in  local  newspapers  are, 
however,  sufficient  to  prove  that  the  invention  had  been  intro- 
duced. Where  the  invention  is  in  actual  operation  in  Spain  or 
its  colonies  a  certificate  attested  by  a  notary  must  be  obtained 
from  the  seller  or  manufacturer. 

The  infringement  of  a  patent  is  punishable  with  a  fine.  All 
articles  wrongly  manufactured  under  the  patent  infringed  are  to  be 
delivered  to  the  rightful  owner  of  the  patent,  and  the  patentee 
has  a  right,  besides,  to  claim  damages.  If  the  infringer  is  not 
able  to  pay  the  fine,  he  will  be  imprisoned  for  a  proportionate 
length  of  time. 


462  >\VI-:M-:N 

Counterfeiters  of  patents  will  be  alto  punished  according  to 
the  Spanish  Criminal  Code. 

Governors  of   the  Spanish  colonies  can  no  longer   grant 

p:it«  lit-. 

•  SWEDEN. 

Patents  for  new  inventions  of  industrial  products  or  for  special 
in.  tho«l-  for  tin-  munufacturc  of  such  products  are  granted  in 
Sweden  under  a  law  of  May  16,  1884.  An  invention  is  not  con- 
sidered to  be  new  if,  before  the  application  for  a  patent,  the  in- 
\t  ntion  is  already  by  publication  or  working  so  far  known  that  it 
can  be  worked  by  experts,  but  publication  in  print  or  by  exhil 
in  an  international  exhibition  will  not  for  a  period  of  six  months 
before  the  lodging  of  the  Swedish  application  prevent  the  grant 
of  a  patent. 

The  applicant  must  be  the  first  inventor,  or  a  person  who  has 
properly  obtained  the  rights  from  him. 

Patents  of  addition  are  granted. 

Patents  are  granted  for  fifteen  years  from  the  date  of  the  ap- 
plication. 

A  fee  of  50  crowns  (2Z.  15*.)  is  to  be  paid  on  lodging  the 
application  and  a  fee  of  25  crowns  (II.  Is.  6d.)  at  the  grant. 
Annuities  must  also  be  paid  :  25  crowns  (II.  Is.  6d.)  during  each 
of  the  2nd,  3rd,  4th,  and  5th  years,  50  crowns  (21.  15s.)  during 
each  of  the  next  five  years,  and  75  crowns  (4/.  2s.  9d.)  during 
each  of  the  last  five  years. 

The  patent  has  no  effect  against  persons  who  have  used  the 
invention  or  have  made  the  necessary  preparations  for  the  use 
of  the  same  before  the  lodging  of  the  application. 

A  patented  invention  may  be  used  for  the  public  service  or 
Government  without  the  consent  of  the  patentee,  but  in  that  case 
the  patentee  is  entitled  to  full  compensation,  which,  in  case  of 
dispute,  is  settled  by  arbitration. 

The  examination  and  decision  upon  applications  rests  with 
the  Patent  Office,  consisting  of  a  commissioner,  a  chief-engineer, 
and  a  number  of  engineers. 

Applicants  must  lodge  with  the  Patent  Office  a  petition, 
specification  with  claims  and  drawings,  in  duplicate.  If  the 
applicant  is  not  resident  in  Sweden  he  must  appoint  a  resident 
attorney  to  represent  him. 

If  the  application  is  approved  it  is  advertised  and  the  papers  are 
open  to  the  public  inspection  during  two  months,  and  any  person 
may  lodge  an  opposition  to  the  grant ;  the  Patent  Office  then  de- 


SWITZEKLAN1)  463 

cides  upon  the  application.  If  the  application  is  rejected,  the 
applicant  may  appeal  to  the  King. 

The  patented  invention  must  be  commercially  worked  in 
Sweden  within  three  years  from  the  grant  of  the  patent,  and  this 
working  must  not  he  afterwards  discontinued  for  one  year.  The 
time  for  the  working  may,  upon  application  to  the  Patent  Office, 
be  prolonged  to  four  years. 

Assignments  must  be  registered. 

Actions  may  be  taken  for  the  repeal  of  the  patent  and  against 
infringers,  from  whom  damages  may  be  recovered  by  the  patentee 
as  well  as  penalties  by  the  Crown. 

Articles  made  abroad  according  to  the  patent  can  be  imported 
without  invalidating  the  grant. 

*  SWITZERLAND. 

The  Swiss  Confederation  has,  by  a  law  which  came  into  force 
Nov.  15,  1888,  provided  for  the  grant  of  patents  for  inventions. 

Patents  are  granted  for  fifteen  years  from  date  of  application, 
subject  to  the  payment  in  advance  of  annuities  of  20  francs  for  the 
first  year,  30  for  the  second,  40  for  the  third,  and  so  on  up  to  the 
fifteenth  year. 

Patents  of  addition  are  granted  upon  payment  of  a  single  tax 
of  20  francs. 

Patents  are  forfeited  if  the  annual  taxes  are  not  paid  within 
three  months  from  their  falling  due,  and  are  liable  to  forfeiture 
if  the  invention  is  not  carried  into  practice  in  Switzerland  within 
three  years  from  the  grant,  or  if  the  patented  article  is  imported 
from  abroad,  the  patentee  having  refused  equitable  offers  for  Swiss 
licences. 

Patents  will  also  be  declared  null  if  the  invention  is  not  new 
or  cannot  be  carried  into  effect,  if  the  patentee  is  not  the  inventor 
or  his  successor,  if  the  title  of  the  patent  is  misleading  with 
fraudulent  intent,  and  if  the  specification  is  not  sufficient  or  does 
not  accord  with  the  model.  Any  interested  person  can  bring  an 
action  for  annulment. 

Applicants  for  patents  not  residing  in  Switzerland  must 
appoint  an  agent  of  Swiss  domicile. 

A  patentee  finding  he  cannot  work  his  invention  without 
using  a  previously  patented  invention  may  obtain  a  licence  if 
three  years  have  lapsed  since  the  lodging  the  application  for  the 
first  patent ;  if  such  licence  is  granted  the  proprietor  of  the  first 
patent  may  also  obtain  a  licence  to  use  the  improvement.  • 


If,  I 

\Vli,  11  tin-  pulilic  interest  requires  Federal  Assembly 

.  ut  the  request  of  the  Federal  Council  or  of  a  Canton,  decree 

••CM 'priation  of  a  patent  at  the  expense  of  the  Confederation 

<>r  of  u  Canton  se  of  the  republic,  upon  payment 

t»  tin-  patentee  of  an  in«l« •iiuiity  fixed  by  th<-  F.d.ial  tnlninal. 

Application  for  tin-  patent  must  be  made  to  the  Federal  Office 
of  Industrial  Pro)*  r  ;  plication  nm  rman.Fn 

or  Italian,  and  must  U-  limited  to  a  tangle  principal 
with  details,  ami  must  be  accompanied  by  a  specification. 
drawings,  if  necessary,  and  proof  that  a  model  of  the  invention 
or  the  article  -ts,  ami   tin-  application  fee  of  -10  francs, 

together  with  1<>  francs  for  the  examination  if  no  pro- 

•1  Council  may  also  require  a  nWi.  1. 

A  provisional  patent  for  two  years  may  be  obtained. 

The  complete  patent  must  be  obtained  within  the  term  of 
provisional  pa: 

A  register  of  patents  granted  is  kept  in  which  all  changes 
relating  to  the  existence,  ownership,  and  enjoyment  of  the  patent 
are  entered,  and  a  note  is  also  made  in  the  register  of  the  lapsing, 
nullity,  and  appropriation  of  the  patent,  as  well  as  of  all  < 
pulsory  licences  grunted. 

Articles  manufactured  under  the  patent,  or  the  packages 
containing  the  articles,  are  to  be  marked  with  the  Federal  Cross 
and  the  number  of  the  patent. 

The  Federal  Office  publishes  the  descriptions  and  drawings 
annexed  to  applications ;  this  publication  may  be  postponed  for 
MX  months  to  allow  of  taking  out  foreign  patents. 

Civil  or  criminal  proceedings  may  be  taken  against  infringers 
and  against  persons  assisting  infringers,  against  persons  who 
have  refused  to  disclose  the  origin  of  infringing  articles  found  in 
their  possession,  and  against  persons  who  have  wrongfully  put 
upon  their  commercial  papers,  notices,  or  products  indie;; 
tending  to  cause  belief  in  the  existence  of  a  patent  when  none 
exists. 

Provision  is  made  for  placing  Switzerland  under  the  terms  of 
the  International  Convention,  and  for  the  protection  of  inventions 
exhibited  in  national  or  international  exhibitions  in  Switzer- 
land. 

TRANSVAAL  (SOUTH  AFRICAN  REPUBLIC). 

Letters  patent  for  this  state  are  granted  under  a  law  of  June  1, 
1887. 

All  persons,  whether  citizens  or  aliens,  can  obtain  letters  patent 


TKANSVAAL  465 

for  new  industrial  inventions.  Corporations  and  companies  of 
which  the  inventor  is  a  member  have  the  same  rights. 

Application  may  be  made  in  general  terms  at  the  office  of  the 
Attorney-General  in  the  language  of  the  Act,  and  must  be  accom- 
panied by  a  description  of  the  invention  La  Dutch  and  by  payment 
of  the  fee  undermentioned.  Upon  this  application  being  accorded 
provisional  protection  is  obtained  for  six  months,  or  the  applicant 
may  lodge  a  detailed  description,  upon  which  he  may  also  obtain 
provisional  protection.  The  applicant  cannot  take  any  proceed- 
ings until  the  patent  is  sealed. 

When  the  applicant  is  desirous  of  completing  his  patent  he 
must  give  notice  of  his  intention  to  proceed :  this  notice  is  ad- 
vertised, and  persons  desirous  of  opposing  can  then  do  so.  Oppo- 
sitions are  heard  by  the  Attorney-General,  who  can  call  in  expert 
assistance.  The  Attorney- General  then  issues  his  certificate, 
upon  which  the  letters  patent  are  sealed. 

The  sealing  will  be  refused  if  the  application  for  it  is  made 
more  than  three  months  after  the  date  of  the  Attorney-General's 
certificate,  or  if  the  application  is  made  after  expiration  of  the 
term  of  provisional  protection. 

Patents  are  granted  for  fourteen  years,  subject  to  the  payment 
of  additional  duties  at  the  end  of  three  and  of  se\en  years. 

The  patent  will  cease  with  the  expiration  of  any  prior  foreign 
patent  for  the  same  invention. 

Alterations  in  specifications  by  way  of  effacing,  improving, 
or  adding  thereto  may  be  made  on  application  to  the  Attorney- 
General  for  that  purpose. 

Proceedings  may  be  taken  to  obtain  grants  of  compulsory 
licences  where  the  patent  right  is  not  used  in  the  state,  or  where 
the  ordinary  demand  for  the  patented  article  cannot  be  supplied, 
or  where  anyone  is  prevented  from  deriving  the  full  benefit  of  an 
invention  in  his  possession. 

The  Act  gives  power  to  grant  prolongations  for  additional 
terms  (not  exceeding  fourteen  years)  if  applied  for  six  months 
prior  to  the  expiration  of  the  original  term. 

Kegisters  of  patent  deeds  and  of  proprietors  of  patents  are  kept, 
and  all  transfers,  licences,  etc.,  must  be  entered  therein. 

Applications  to  the  High  Court  may  be  made  by  the  Attorney- 
General  and  by  persons  interested  for  the  cancellation  of  a  patent 
upon  the  usual  grounds. 

A  penalty  not  exceeding  2,51.  is  imposed  upon  any  person 
selling  an  article  as  patented  which  has  not  been  patented,  and  a 
penalty  not  exceeding  501.  is  imposed  upon  any  person  Belling 

H  H 


an  article  as  having  a  patent  right  :  hen  another  person 

has  the  patent  right. 

Actions  for  infringements  must  be  taken  in  the  High  Court, 
and  tin-  Act  irh  •  -  full  directions  as  to  pleadings  and  the  cor 

ich  proceedings. 

The  lawful  representatives  of  a  deceased  inventor  may  ol 
a  patent  ri.i,'ht  for  the  invention  on  making  application  within  six 
months  of  tin-  death. 

•lection  for  inventions  shown  at  international  or  industrial 
exhibitions  is  provided  for. 

The  (lovernment  may  demand  from    the    inventor  a 
of  his  invention    at    any    time    on    i 

•me. 

The  fees  payahle  for  patents  are: 

On  the  deposit  of  tlie  application  .       *.\     It. 

.    issuing  of  certificate        .  11 

..     ..    sealing  the  patent  .  .          11 

I1.,  fore  the  expiration  of  three  years  .          5    0 

..    ten      „  10    0 

•Ti 

The  Law  of  December  26,  1888,  provides  for  the  protection 
of  inventions  by  patents  for  terms  of  five,  ten,  or  fifteen  years, 
subject  to  an  annual  tax  of  100  piastres. 

Petition  must  be  made  to  the  Prime  Minister,  accompanied  by 
a  specification  in  French,  and  drawings  (in  duplicate),  together 
with  100  piastres.  Notice  of  the  application  is  then  published, 
and  oppositions  can  be  entered  within  two  months.  The  specifi- 
cations, drawings,  and  models  are  open  to  public  inspection. 

Alterations,  improvements,  and  additions  may  be  made  by  the 
patentee  or  person  entitled  to  the  patent  during  its  whole  term. 
Certificates  of  addition  are  given  subject  to  payment  of  a  fee  of 
20  piastres.  None  but  the  patentee  or  persons  interested  through 
him  can,  during  the  first  year,  legally  obtain  patents  for  alters? 
additions,  or  improvements,  the  original  patentee  having  the 
preference  for  that  year. 

Patents  may  be  assigned  in  whole  or  in  part  by  notarial  deeds, 
and  all  assignments  must  be  registered.  Licensees  of  the  original 
patent  have  the  benefit  of  all  certificates  of  addition. 

Protection  is  given  to  inventions  exhibited  at  public  exhibi- 
tions. 

Foreigners  may  obtain  patents,  but  where  a  patent  has  been 


TUEKEY  467 

already  granted  abroad,  the  duration  of  the  Tunis  patent  must 
not  exceed  that  of  the  foreign  patent. 

Patents  are  null  if  the  invention  is  not  new,  if  the  title  of  the 
patent  is  fraudulent,  and  if  the  specification  is  insufficient.  No 
invention  is  considered  new  which  has  been  published  hi  Tunis 
or  abroad  before  the  date  of  the  application,  sufficiently  to  enable 
it  to  be  worked. 

The  patentee  is  deprived  of  his  rights  :  On  non-payment  of  the 
annuity  before  the  beginning  of  each  year  ;  if  the  invention  is  not 
worked  within  two  years  from  the  date  of  the  patent,  or  has  ceased 
to  be  worked  for  two  consecutive  years,  or  where  the  patentee  has 
introduced  into  Tunis  articles  manufactured  in  foreign  countries 
similar  to  those  which  are  protected  by  the  patent ;  but  authority 
may  be  obtained  for  the  introduction  of  models  or  of  articles 
intended  for  public  exhibitions  or  for  trials. 

Whoever  calls  himself  patentee  having  no  patent,  or  who, 
being  a  patentee,  mentions  his  patent  without  the  words  '  without 
guarantee  of  the  Tunisian  Government,'  is  liable  to  a  fine. 
Action  can  be  taken  for  the  annulment  of  the  patent  by  any 
person  interested, 

Infringers  can  be  prosecuted  and  punished  by  fine,  and,  in  the 
case  of  a  workman  or  an  associate  of  a  workman  of  the  patentee, 
by  imprisonment. 

TURKEY. 

The  Ottoman  Government  grants  patents  to  natives  or 
foreigners  for  five,  ten,  or  fifteen  years,  subject  to  an  annual  tax 
of  two  Turkish  pounds,  but  the  Turkish  patent  will  expire  with 
the  termination  of  any  earlier  foreign  patent.  Pharmaceutical 
compounds  or  medicines  and  financial  combinations  are  not 
patentable,  and  the  inventions  must  not  have  been  published  in 
Turkey  or  abroad.  The  applicant  for  a  patent  must  supply  a 
petition,  a  description  and  drawings,  or  samples  to  explain  the 
invention.  The  petition  must  be  limited  to  a  single  object,  with 
the  details  which  form  part  of  it,  and  must  indicate  the  term  for 
which  the  patent  is  solicited.  The  term  of  the  patent  is  reckoned 
from  the  date  of  filing  the  application.  Patents  are  granted 
without  examination  and  at  the  inventor's  own  risk.  Inventions 
relating  to  instruments  of  warfare  are  submitted  to  the  Wai- 
Department,  and  such  as  are  approved  by  the  department  are 
bought  by  the  State.  Inventions  of  this  kind  which  are  not 
favourably  reported  upon  are  rejected. 

H  H   2 


AY 

The  term  of  the  patent  can  only  be  prolonged  by  special 

legislation. 

Certificates  of  alteration,  addition,  or  improvement  are 
granted.  The  patentee  is,  h..\\.-\.  r.  alone  entitled  to  receive  a 

:icate  of  addition  di.  first  year  of  his  pat.  nt.     If 

applications  are  made  by  others  they  will  be  kept  secret  unt 
first  year  of  the  patent  has  expired,  and  will  tin  u  be  granted. 

Patents  may  be  assigned  in  whole  or  in  part  by  a  de< 
assignment,  \\hirh  must  be  registered  with  ti  r  of  Com- 

in.  iv,-;  anil  the  SJH  rifiratioiis,  <lrawings,  and  models  are  acces- 
Miile  to  the  puhlic,  and  may  be  copied. 

Patents  are  invalid  when  the  invention  is  not  new  or  when 
tin  \  arc  for  mere  principles,  when  the  invention  is  contrary  to 
puhlic  morals,  when  the  title  of  the  patent  is  fraudulently  mis- 
leading, or  when  the  SJH  ritication  is  insuflicient.  Patents  will 
DM  void  in  default  of  payment  of  the  annuities,  when  the 
invention  is  not  worked  in  Turkey  within  two  years  from  the  date  of 
the  patent,  or  if  the  working  is  thereafter  discontinued  for  two  con- 

\v  years,  unless  the  patentee  can  show  cause  tojustit 
inaction,  or  by  the  introduction  of  articles  manufactured  abroad 
according  to  the  invention,  unless  by  special  authorisation  of  the 
Government. 

Any  interested  person  may  bring  an  action  before  the  Tri- 
bunal of  First  Instance  to  rescind  the  patent,  and  infringers  of 
patents  an  liahle  to  a  fine  of  from  five  to  one  hundred  Turkish 
1><  uinds. 


The  Law  of  November  12,  1885,  authorises  the  executive  to- 
p-ant patents  for  inventions  for  terms  of  three,  six,  or  nine  years 
at  the  applicant's  option,  and  subject  to  an  annual  payment  of 
•J~>  dollars.  After  the  grant  is  made  the  executive  fixes  a 
period  within  which  the  patented  invention  must  be  worked  in 
Uruguay. 

Application  for  the  patent  must  be  made  by  petition  to  the 
Minister  of  the  Interior,  stating  the  term  desired,  accompanied 
by  a  specification  and  specimens,  drawings,  or  models.  The 
Patent  Office  is  to  publish  even"  two  years  all  the  privileges 
granted,  with  the  specifications  and  drawings. 

Patents  of  addition  may  be  obtained.  Patents  may  be  assigned 
by  public  deed. 

Provision  is  made  for  nullity  and  forfeiture  of  patents,  and  for 
the  protection  of  patentees  against  infringements. 

A  register  of  patents  is  kept. 


VENEZUELA  469 


VENEZUELA. 

A  law  of  May  25,  1882,  provides  for  the  grant  of  patents  for 
five,  ten,  or  fifteen  years  for  inventions  not  already  known  and 
used  in  the  country,  or  patented  or  described  in  a  printed  publi- 
cation in  the  republic  or  abroad,  or  having  been  in  public  use  for 
more  than  two  years  prior  to  the  application,  unless  such  use  has 
been  abandoned. 

Applications  for  patents  must  be  addressed  to  the  Federal 
executive  power  through  the  Minister  of  the  Interior.  The 
applicant  must  declare  on  oath  that  he  is  the  inventor.  The 
patent  for  an  original  invention  is  subject  to  payment  of  about 
80  francs  per  annum  for  the  whole  term  of  the  patent. 

Persons  who  have  obtained  patents  in  foreign  countries  can 
obtain  patents  for  Venezuela,  but  such  patents  are  only  granted 
for  the  number  of  years  the  foreign  patent  has  to  run. 

The  description  of  the  invention  patented  is  published  in  the 
Official  Gazette  after  the  expiration  of  the  patent,  or  after  the 
patent  is  declared  null. 

Actions  for  infringements  may  be  tried  before  the  Federal 
tribunals. 


1'ATENT  LAWS  Ol'   T1IK   /;/,'/ 77.s7/    I'f 

HO  AD. 

:  the  Inn  .nniiciit  dec-lined  in  the  year  1H52  to  issue 

any  grants  of  :ost  of  our  possessions 

abroad  have  tl  .  tatiiahed  patent  laws,  !y  framed 

upon  the  Hi-it i>!i  la\\ .  The  nmnhor  of  patents  granted  in  Canada, 
liuliii.  ami  the  Atistraliun  colonies  is  large  and  is  increasing.  I: 
will  he  seen  from  tin-  following  abstracts  that  there  is  now  no 
important  colony  in  which  inventions  cannot  be  protected. 

r.yan  Order  in  Council  dated  February  8, 1890,  New  7.  aland 
is  made  a  party  to  the  International  Convention  for  the  Protec- 
tion of  Industrial  Property.  Victoria,  Queensland,  Tasmania, 
and  Natal  arc  the  only  other  colonies  which  have  at  present 
passed  the  necessary  laws  to  enable  them  to  join  the  convention. 

THE  BAHAMA  ISLANDS. 

The  Colonial  Act,  62  Viet.  cap.  28,  assented  to  May  28, 1889, 
makes  provision  for  protecting  inventions  in  these  islands. 

cry  person  desirous  of  obtaining  letters  patent  must  file  a 
complete  specification  in  the  office  of  the  Registrar  of  Records, 
and  must  pay  to  the  registrar  37.  Persons  residing  abroad  must 
file  with  the  specification  a  certified  copy  of  any  letters  patent 
which  they  have  obtained  abroad  for  the  same  invention.  The 
applicant  must,  within  ten  days  after  filing  his  complete  specifica- 
tion, present  a  petition  to  the  Governor,  accompanied  by  a  copy  of 
the  specification,  praying  for  the  grant.  The  Governor  will  there- 
upon issue  letters  patent  for  the  invention  for  the  term  of  seven 
years,  unless  he  is  of  opinion  the  invention  is  not  new,  is  not 
patentable  in  law,  is  already  in  the  possession  of  the  public, 
been  previously  described  in  a  printed  publication,  or  has  already 
been  patented  in  the  colony.  Specifications  are  open  to  the 
public  in  the  office  of  the  Registrar  of  Records. 

Legal  proceedings  for  infringement  may  be  taken  in  the  Courts 
of  the  islands,  the  remedies  being  similar  to  those  given  by  the 
English  law,  and  the  defendant  may  plead  any  matter  which  can 
be  pleaded  in  English  Courts. 


BARBADOS  47 1 

Where  the  invention  is  not  brought  into  operation  within 
three  years  after  filing  the  specification,  the  exclusive  privilege  is 
forfeited  and  ceases  to  exist. 

Patents  are  assignable,  in  whole  or  in  part,  by  instruments 
in  writing,  which  must  be  registered  in  the  office  of  the  Kegistrar 
of  Records. 

Upon  application  to  the  Governor  in  Council  patents  may  be 
renewed  for  a  further  term  of  seven  years  on  payment  of  10Z., 
and  for  a  third  term  of  seven  years  on  payment  of  2(K. 

Registers  of  patents  and  of  proprietors  are  kept  at  the  office 
of  the  Registrar  of  Records,  in  which  the  grants  of  patents, 
assignments,  and  licences  are  entered.  Writs  of  scire  facias  to 
repeal  patents  may  be  issued  to  the  Provost  Marshal  if  the 
grantee  resides  in  the  colony  ;  if  not  resident,  such  writs  are  to 
be  filed  in  the  office  of  the  prothonotary  of  the  General  Court, 
and  notice  thereof  in  writing  is  to  be  served  at  the  last  known 
residence  or  place  of  business  of  the  grantee. 


BABBADOS. 

An  Act  dated  December  12,  1888,  amended  by  an  Act  of  1888, 
provides  for  the  grant  of  privileges  to  inventors. 

Every  person  filing  a  complete  specification  of  his  invention, 
with  a  copy,  in  the  Colonial  Secretary's  Office  of  the  island,  and 
paying  a  fee  of  31.  6s.  8d.,  is  entitled  to  the  exclusive  right  of  the 
invention  for  a  term  of  seven  years. 

The  privileges  may  be  protected  from  infringement  by  proceed- 
ings taken  in  the  courts  of  the  island,  the  pleadings  and  proceed- 
ings being  similar  to  those  taken  in  the  High  Court  of  Justice  in 
England. 

The  exclusive  privilege  will  be  void  unless  the  invention  is 
new,  in  case  the  applicant  is  not  the  first  and  true  inventor,  or  if 
at  the  time  the  specification  was  filed  the  invention  was  well 
known  elsewhere,  and  also  known  to  some  other  person  or  persons 
in  the  island. 

The  exclusive  right  will  cease  if  the  invention  is  not  brought 
into  operation  in  the  island  within  three  years  after  filing  the 
specification. 

The  privilege  may  be  renewed  for  two  additional  terms  of  seven 
years  each  on  application  being  made  before  the  expiration  of 
the  original  or  renewed  privilege,  and  on  payment  of  101.  for  the 
second  term,  and  20/.  for  the  third  term. 


J7L'         BORNEO  (BRITISH  NORTH)- BRITISH  GUI 

Articles  made  abroad  according  to  the  invention  protected 
can  be  imported  without  invalidating  the  privilege  granted. 


BORNEO  (Bum^i  N..I. 

Tin-  (iovrnior  of  British  North  Borneo,  by  Proclamation  1  of 
1887,  enacted  that  the  <  >nliimnr<-  of  the  Legist 
Straits  Settlements  nu in l»r<  d  Xll.<>t "1^71 ..  nMl.-.l  -An  Ordinance 
for  granting  exclusive  privileges  to  inventors/  was  adopted  as 
the  law  of  British  North  Bumrn.  ;n;  ,-u  to  persons, 

places,  or  subjects  in  the  said  Ordinance  should  be  taken  as  r> 
ring  to  corn  -ponding  or  analogous  persons,  places,  or  subjects 
within  British   North    Borneo.     (The  Straits  Settlements  Law 
is  given  at  p.  : 

The  law  relating  to  patents  is  governed  by  an  ordinance  dated 
July  12,  1861,  No.  18. 

Kvt-ry  imvntor  desirous  of  obtaining  a  patent  must 
the  Governor  for  the  grant.     The  form  of  the  documents  is 
similar  to  those  in  use  in  Great  Britain,  and  the  proceedings 
under  the  petition  are  also  similar,  there  being  a  reference  to  the 
Attorney-General,  whose  duties  in   respect  to  patents  nearly 
resemble  those  of  the  same  officer  at  home.    Provisional  protec- 
tion is  granted  for  twelve  months.     The  patent  expires   with 
\piration  of  an  earlier  patent  for  the  same  invention  else- 
where. 

The  conditions  of  the  patents  granted  are  nearly,  if  not 
precisely,  similar  to  those  of  the  British  grants.  A  duty  of 
100  dollars  is  payable  in  the  seventh  year  of  the  term.  The 
patent  is  granted  for  fourteen  years,  and  the  Governor  has  power 
to  prolong  the  patent  for  a  term  not  exceeding  seven  years.  A 
further  duty  of  100  dollars  is  payable  on  sealing  a  patent  for  a 
prolongation. 

The  ordinance  also  contains  provisions  as  to  disclaimers  similar 
to  those  in  operation  at  home.  Proceedings  for  infringement 
must  be  taken  in  the  Supreme  Court  of  the  island,  or  before  the 
Chief  Justice.  Confirmation  of  a  patent  can  be  obtained  when  the 
patentee  is  proved  not  to  be  the  first  inventor,  though  he  believed 
himself  to  be  so.  The  letters  patent  will  not  prevent  the  use  of 
the  invention  in  foreign  ships  resorting  to  the  ports  of  the 
colony. 


BRITISH  HONDURAS— CANADA  473 


BRITISH  HONDUEAS. 

Patents  are  granted  for  this  colony,  under  the  Act  for  amending 
the  law  for  granting  patents  for  inventions,  dated  September  10, 
1862,  now  chapter  74  of  the  consolidated  laws  of  British  Hon- 
duras. 

The  provisions  of  this  Act  bear  a  general  resemblance  to  those 
in  the  British  Patent  Law  Amendment  Act  of  1852.  Commis- 
sioners of  patents  for  inventions  are  appointed,  who  have  power 
to  make  rules  regulating  grants.  Every  applicant  must  petition 
the  Commissioners,  and  the  petition  and  accompanying  specifi- 
cation are  referred  to  the  Attorney-General  for  the  colony.  The 
applicant  can  lodge  either  a  provisional  or  a  complete  specification 
in  the  first  instance.  The  Attorney- General  grants  a  certificate  of 
allowance,  which  certificate  is  filed  in  the  office  of  the  Colonial 
Secretary,  whereupon  the  invention  is  protected  for  six  months. 
This  protection  is  advertised,  and  the  applicant  is  at  liberty  to 
give  notice  to  proceed ;  and,  on  the  expiration  of  the  time  allowed 
for  oppositions,  letters  patent  are  granted  for  fourteen  years. 
The  letters  patent  are  void  unless  duties  are  paid  at  the  expiration 
of  three  and  seven  years  from  the  grant.  The  letters  patent 
expire  on  the  determination  of  any  earlier  patent  granted  for  the 
invention  in  Great  Britain  or  in  any  foreign  country  or  British 
colony.  The  letters  patent  will  not  prevent  the  use  of  the  inven- 
tion in  foreign  ships  within  the  ports  of  the  colony.  This  Act  also 
provides  for  a  '  Eegister  of  Patents  '  and  a  '  Eegister  of  Proprie- 
tors '  being  kept.  All  assignments  and  licences  must  be  registered. 
Patentees  may  also  enter  disclaimers  or  memoranda  of  alteration. 
The  Commissioners  of  Patents  are  authorised  to  grant  prolonga- 
tions of  the  original  term  not  exceeding  fourteen  years.  Actions 
for  infringements  must  be  brought  in  the  Supreme  Court  of  the 
colony. 

The  Government  fees  are  : 

Dollars 

On  sealing  letters  patent          ...  30 

Third  year's  duty  ....  50 

Seventh  year's  duty       .  .         .         .         100 

CANADA. 

The  Law  of  Patents  for  the  Dominion  of  Canada  is  regulated 
by  the  Patent  Act  No.  61  of  1886. 

This  Act  provides  for  the  constitution  of  a  Patent  Office  and 


171  ADA 


.'pointment  of  a  Commissioner  of  Patents,  who  is  the  Minister 

tor  tin-  tinii  being,  also  for  a  deputy  commissioner 

and  such  clerks  an<I  officers  as  are  necessary.    A  seal  is  also 

led  fur,  with  which  all  patents  and  <  -nenls  issuing 

t'r»ni  tlit  are  to  be  sealed. 

IV  y  be  obtained  l>y  inventors  or  their  assignees,  or, 

->e  of  death,  their  le^al  r.  prescntative,  for  all  invention 
known  or  used  by  other  persons  before  the  invention  thereof,  and 
which  have  n<  puhlic  use  or  on  sale  with  th«-  consent  of 

the  inventor  for  more  than  one  year  previous  to  the  application 
••"la.     It'  the  inventor  In-  alive  lie  must  himself  sign  the. 
applicatioTi  paper-*,  as  the  applicant  is  1  to  make  oath  that 

he  is  tin-  inventor,  or.  if  the  inventor  is  dead,  that  the  applicant 
helie\vs  the  person  whose  assignee  or  legal  representative  he  is 
was  the  inventor,  and  must  mention  as  his  domicile  some  known 
and  specified  place  in  Canada.  Where  a  foreign  patent  exists  the 
Canadian  application  must  be  made  before  the  foreign  patent  has 
been  in  existence  for  twelve  months,  and  any  person  who  has 
commenced  the  manufacture  during  such  twelve  months  has  the 
right  to  continue  notwithstanding  the  patent  ;  the  Canadian 
patent  expires  at  the  earliest  date  at  which  any  foreign  patent  for 

i  me  invention  expires.    Improvements  upon  original  pa 
may  he  patented  giving  the  inventor  no  r;  ••  the  original 

imention,  nor  does  the  original  patent  give  any  right  to  use  the 
patented  improvement. 

A  specification  of  the  invention,  accompanied  hy  drawings 
where  neOMHaiy,  must  be  lodged  in  duplicate  with  the  petition 
for  the  patent,  and  tin-;  specification  must  clearly  d.'-<-ril»  the  in- 
vention and  state  clearly  what  is  claimed  as  new.  A  working 
model,  or  specimens  of  the  ingredients  and  of  the  composition  of 
matter,  sufficient  for  experiments,  must  also  be  furnished,  unless 
specially  dispensed  with. 

The  Commissioner  may  refuse  patents  : 

(a)  When  he  is  of  opinion  that  the  invention  is  not  patentable 
in  law. 

(b)  When  he  is  of  opinion  that  the  invention  is  already  in 
possession  of  the  public  with  the  consent  of  the  inventor. 

(c)  When  he  considers  there  is  no  novelty  ; 

(d)  Or  that  the  invention  has  been  described  in  a  printed  book 
or  publication  before  the   application,  or  is  otherwise  in  the 
possession  of  the  public. 

(e)  When  the  invention  has  already  been  patented  in  Canada 
or  elsewhere,  unless   the   Commissioner  has  doubts  whether 


CANADA  475 

the  previous  patentee  or  the  second  applicant  is  the  first  in- 
ventor. 

The  applicant  is  at  liberty  to  appeal  to  the  Governor  in 
Council  from  an  adverse  decision  of  the  Commissioner. 

Conflicting  applications  are  submitted  to  three  arbitrators,  one 
to  be  chosen  by  each  party  and  the  third  by  the  Commissioner. 

The  term  of  each  patent  is  fifteen  years,  and  the  full  fee  may 
be  paid  on  application  for  the  whole  term,  or  for  five  or  for  ten 
years  only ;  and  if  a  partial  fee  only  is  paid  the  patent  will  expire  at 
the  termination  of  the  term  for  which  the  fee  is  paid,  unless  the 
fee  for  the  further  term  is  paid  before  the  expiration  of  the  term 
for  which  the  fee  is  originally  paid,  and  a  certificate  of  such 
further  payment  obtained  from  the  Patent  Office. 

Patents  may  be  surrendered  and  new  patents  issued  with 
amended  specifications  where  it  appears  there  has  been  an  in- 
sufficient description  or  specification,  or  the  patentee  has  claimed 
more  than  was  new,  if  such  error  has  arisen  from  inadvertence, 
accident,  or  mistake,  and  separate  patents  may  be  issued  for  dis- 
tinct and  separate  parts  of  the  invention  patented. 

The  patentee,  his  assignee,  or  legal  representatives  may  dis- 
claim anything  included  in  the  patent  by  mistake,  but  such  dis- 
claimer will  not  affect  pending  suits. 

Patents  are  assignable  as  to  the  whole  or  any  part,  and  assign- 
ments must  be  registered  in  the  Patent  Office. 

The  patent  will  be  held  void  if  any  material  allegation  in  the 
application  is  untrue,  or  if  the  specification  contains  more  or  less 
than  is  necessary,  when  such  addition  or  omission  is  wilfully  made ; 
but  if  it  appears  to  the  Court  that  such  omission  or  addition  was 
involuntary,  and  it  is  proved  that  the  patentee  is  entitled  to  the 
remainder  of  his  patent  pro  tanto,  the  Court  will  hold  the  patent 
valid  for  such  parts  as  the  patentee  is  entitled  to. 

Bemedies  are  given  for  the  recovery  of  damages  for  infringe- 
ment, and  patentees  may  obtain  injunctions  to  restrain  infringe- 
ments and  orders  for  accounts,  etc. 

Where  the  plaintiff  fails  to  sustain  his  action  because  his 
specification  and  claim  are  too  wide,  whilst  the  defendant  is  found 
to  have  infringed  a  part  of  the  patent  which  is  properly  specified 
and  claimed,  the  Court  may  discriminate  and  give  judgment 
accordingly. 

Proceedings  to  repeal  patents  may  be  taken  by  action  of  scire 
facias. 

Patents  granted  are  void  unless  the  construction  or  manu- 
facture of  the  patented  invention  is  commenced  in  Canada  within 


two  years  from  tin  .Uv  of  tin-  |  henceforward  con* 

tiiniously  carried  on.    Tin  pat.  nt  will  aim  be  void  if  the  patentee 
imports  articles  made  according  to  the  invention  into  Canada 
ition  of  twelve  months  from  the  date  of  the  grant ; 
the  term  for  manufacture  in  Canada  may  be  extended  for  a  for 
term  of  two  years  if  the  patentee  can  prove  that  for  reasons 
beyond  his  control  he  was  prevented  from  complying  with  the 
above  conditions.   Tin  t.  mi  tor  importations  may  also  be  extended 
for  an  additional  term  of  one  year  on  satisfactory  cause  being 
*ho\vii.    All  intending  applicant  not  having  |M-rfected  his  hm  i 
may  file  a  description  of  it  in  t!  Office,  and  is  th. 

entitled  to  receive,  during  c :  :  om  the  date  of  his  filing. 

notice  of  all  applications  of  a  conflicting  nature. 

The  fees  payable  to  the  Commissioii  ure  :  For  the 

full  term  of  fifteen  years,  60  dollars  ;*for  ten  years,  40  dollars ; 
for  five  years,  20  dollars  ;  for  a  further  term  of  ten  years,  40 
dollars;  for  a  further  term  of  five  >  dollars;  and  for 

lodging  a  caveat,  5  dollars. 

The  Government  of  Canada  may  use  any  patented  invention, 
paying  to  the  patentee  such  sum  as  the  Commissioner  reports  to 
be  a  reasonable  compensation ;  the  use  of  the  invention  in  any 
foreign  ships  is  not  prevented  by  the  patent. 

All  patented  articles,  or  the  package  containing  them,  must  be 
stamped  or  marked  with  the  word  '  Patented,'  and  with  the  year 
of  the  grant :  the  patentee  is  liable  to  a  fine  of  100  dollars 
for  selling  or  offering  for  sale  any  patented  article  not  so 
marked.  Marking  an  article  •  Patented  '  which  is  not  patented 
is  a  misdemeanor,  and  persons  so  offending  are  liable  to  fine 
and  imprisonment. 

All  patents  issued  prior  to  the  Act  for  any  province  now 
forming  part  of  Canada  remain  in  force  for  the  residue  of  the 
term  granted,  and  any  patent  previously  granted  for  any  pro- 
vince may,  if  the  patent  has  not  been  known  or  used,  or  has  not 
been  on  sale  with  the  consent  of  the  patentee  in  the  other  pro- 
vinces, be  extended  over  the  whole  of  Canada  for  the  remainder 
of  the  term  mentioned  in  the  provincial  patent,  and  every  patent 
previously  issued  upon  which  the  fee  required  for  the  whole  term 
has  been  paid  shall  be  deemed  to  have  been  issued  for  the  term 
of  fifteen  years,  subject  to  its  ceasing  on  the  same  conditions  as 
those  on  which  patents  thereafter  issued  are  to  cease  uader  this 
Act. 


CAPE  OF  GOOD  HOPE— CEYLON  477 


CAPE  OF  GOOD  HOPE. 

This  Colonial  Legislature  has  adopted  a  system  very  similar 
to  that  of  1852  of  the  mother  country,  governed  by  an  Act  passed 
in  1860  (No.  17). 

The  applicant  for  a  patent  must  deposit  at  the  office  of  the 
Colonial  Secretary  a  specification  of  his  invention,  which  is  re- 
ferred to  the  Attorney-General,  who  reports  upon  it  and  issues  a 
warrant  for  the  grant. 

A  writ  of  scire  facias  may  be  sued  out  for  the  repeal  of  the 
patent. 

The  letters  patent  are  void  unless  a  stamp  duty  of  10Z.  is  paid 
before  the  expiration  of  the  third  year,  and  of  20L  before  the 
expiration  of  the  seventh  year  of  the  grant.  Confirmation  of  a 
patent  can  be  obtained  when  the  patentee  is  proved  not  to  be  the 
first  inventor,  although  he  believed  himself  to  be  so. 

Extensions  for  a  term  not  exceeding  fourteen  years  may  be 
obtained. 

Letters  patent  for  foreign  inventions  expire  with  the  foreign 
grant.  The  grant  does  not  prevent  the  use  of  the  invention  in 
foreign  ships  resorting  to  ports  in  the  colony. 

The  regulations  as  to  disclaimers  and  legal  proceedings  are 
similar  to  those  of  the  home  patents. 

A  register  of  patents  and  of  proprietors  is  kept,  and  all 
assignments  and  licences  must  be  registered. 

There  is  a  penalty  of  100Z.  for  the  unauthorised  use  of  the 
word  '  Patent.' 

Particulars  of  breaches  and  of  objections  are  to  be  given  in 
patent  actions. 

CEYLON. 

The  Inventions  Ordinance  No.  6  of  1859  governs  the  law  of 
patents  in  this  colony. 

The  inventor  of  any  new  manufacture  may  petition  the 
Governor  for  leave  to  file  a  specification  thereof ;  such  petition 
must  be  in  writing,  and  be  signed  by  the  petitioner  or  his  agent, 
and  must  state  the  name,  condition,  and  place  of  residence  of 
the  petitioner,  and  the  nature  of  the  invention,  upon  which  the 
Governor  may  order  the  petitioner  to  file  a  specification. 

The  specification  must  be  filed  within  six  months  from  the 
date  of  the  order,  upon  which  the  Governor  may  grant  to  the 
inventor  the  sole  and  exclusive  privilege  of  making,  selling,  and 


478  FIJI 

using  the  said  invention  in  '  r  the  u-nn  of  fourteen  yean 

from  the  time  of  filing  such  spe  and  for  a  further 

not  exceeding  fourteen  years,  upon  petition  to  be  presented  by 
.tor,  not  more  than  one  year  and  not  less  than  six  in 
before  the  expiration  of  the  exclusive  privilege  granted. 

The  s]  ii  must  IK-  in  writing,  and  Designed  by  the 

petitioner,  and  must  particularly  describe  and  define  the  nature 
of  Uu  invention,  and  the  manner  in  which   tin-  same  is  to  be 

if  d  out.     The  use  of  an  B  in  public  by  the  inventor, 

his  servants,  agents,  or  licensees  is  not  deemed  a  public  use 
within  the  meaning  of  the  onlin. 

•  \rlu-i\v  privilege  will  cease  if  tin-  invention  or  the 
mode  in  which  it  is  exercised  is  declared  by  the  Governor  to  be 
mischievous  to  the  State,  or  generally  prejudicial  to  the  pul 

No  specification  can  be  lil.-d  until  the  petitioner  has  paid  all 
fees.  The  fee  on  filing  a  specification  is  101. 

FIJI. 

The  legislation  with  respect  to  the  protection  of  inventions  by 
:  s  patent  is  comprised  in  the  Ordinances  No.  3  of  1870  and 
No.  7  of  1882. 

The  inventor,  his  heirs,  executors,  administrators,  or  assigns 
can  obtain  letters  patent  for  the  term  of  fourteen  years  by 
tiling  in  the  office  of  the  Colonial  Secretary  a  petition  accom- 
panied by  a  specification  and  declaration.  Provisional  protection 
is  granted  for  six  months. 

The  rights  granted  in  the  colony  will  cease  with  :. 
ration  of  any  earlier  patent  obtained  elsewhere. 

All  letters  patent  and  assignments  are  to  be  registered  in  the 
office  of  the  Registrar  General. 

Letters  patent  may  be  conceded  or  revoked  by  order  of  'the 
Supreme  Court  or  a  judge  if  the  invention  is  of  no  utility,  if  tin- 
invention  was  not  new  at  the  time  of  presenting  the  petition,  if 
the  petitioner  is  not  the  true  and  first  inventor,  or  if  the  petition 
or  specification  contains  a  wilfully  false  staten. 

The  Supreme  Court  has  power  to  order  any  specification  or 
petition  to  be  amended. 

The  fees  payable  are  : 

On  depositing  petition  and  specification  .  £5    5$. 
For  certificate  of  provisional  protection  .     8    8 
For  obtaining  letters  patent    .        .        .   10  10 
Filing    memorandum    of   alterations  in 

amendment  of  specification        .        .11 


IIOSG   KOXG— IXDIA  479 


HONG  KONG. 

The  Ordinance  for  this  colony  is  No.  14  of  1862,  by  which  all 
British  patents  can  be  extended  to  Hong  Kong.  A  petition, 
specification,  and  declaration  are  to  be  filed  in  the  office  of  the 
Colonial  Secretary,  and  notice  thereof  and  of  the  intention  to 
apply  for  letters  patent  and  of  the  time  of  the  sitting  of  the 
Executive  Council,  before  whom  the  matter  of  the  petition  will 
come  for  discussion,  together  with  such  other  particulars  as  the 
Governor  shall  require,  must  be  inserted  twice  in  the  Hong  Kong 
Government  Gazette.  The  Governor  will  either  grant  or  refuse 
the  patent  according  to  the  advice  of  the  Executive  Council.  The 
letters  patent,  when  granted,  are  directed  to  be  in  the  form  pre- 
scribed by  the  Patent  Law  Amendment  Act,  1852,  for  British 
letters  patent,  and  the  letters  patent,  if  granted,  confer  privileges 
similar  to  those  granted  by  British  letters  patent  and  for  the 
term  of  that  patent.  The  letters  patent  can  be  extended  in  cases 
Avhere  the  British  patent  has  been  extended. 

The  petitioner  must,  in  all  cases,  be  either  the  patentee  or  the 
owner  by  assignment  of  the  patent  in  Great  Britain. 

INDIA. 

The  law  of  patents  in  India  is  now  governed  by  the  Inventions 
and  Designs  Act,  1888. 

The  inventor  of  a  new  manufacture  desirous  of  obtaining  pro- 
tection in  India  must  apply  in  writing  to  the  Governor- General 
in  Council  for  leave  to  file  a  specification  thereof.  He  must  state 
his  name,  occupation,  and  address,  and,  if  a  patent  has  been  ob- 
tained in  England,  the  date  of  the  patent,  and  must  also  furnish 
a  specification  and  drawings,  and  state  the  particular  novelty 
whereof  it  consists.  A  model  may  also  be  required. 

The  Governor-General  may,  after  such  inquiry  as  he  sees  fit 
(including,  where  he  thinks  it  necessary,  a  reference,  at  the  cost  of 
the  applicant,  to  some  person  named  by  him),  authorise  the  appli- 
cant to  file  a  specification. 

If  two  or  more  inventors  apply  on  the  same  day  to  file 
specifications  of  identical  inventions,  the  Governor- General  may 
authorise  both  or  all  the  applicants  to  file  specifications  :  if  they 
apply  on  different  days,  the  first  applicant  has  a  preference. 

If  the  applicant  causes  a  specification  of  his  invention  to  be 
filed,  and  pays  the  required  fee  within  six  months  from  the  date 


480  INDIA 

of  the  ":<!•'•  -:\;n--  him  leave  to  file,  the  applicant  i«  entitled 
to  the  I'xclu-:-.  h  ln<ii.i  for  fourteen  years  ; 

this  privilege,  however,  ceases  if  the  prescribed  fees  are  not  duly 
paid.  The  periods  allowed  for  filing  the  specification,  and  also  for 
payment  of  the  fees,  may  be  extended  on  application  made. 

The  specification  must  U-  in  writing  signed  by  the  applicant, 
and  must  set  forth  tin-  piv.-i-.i-  invention,  with  such  full  particulars 
as  will  enable  others  to  put  th«-  in\< mion  into  practice,  n 
the    invention   is    for  an    impr-  <-nh.    tlu>   specification 

must  distinguish   explicitly  between  what  is  old   and  what  is 

111  W. 

ir  copies  (at  least)  of  the  specification  and  drawings  an 
nquiivd.  one  for  the  Secretary  and  the  others  for  the  Governors 
of  Fort  George,  Uombay,  and  the  Chief  Commissioner  of  Burma ; 
and  tin  specifications  are  to  be  open  for  inspection  at  places  to 
be  appointed  by  these  authorities. 

The  Secretary  is  to  keep  a  book,  called  the  '  Register  of  In- 
ventions,' in  which  is  entered  every  application  for  leave  to  file 
a  specification,  any  order  made  thereon,  any  specification  filed, 
and  any  subsequent  proceeding  relating  to  the  invention. 

The  Secretary  is  also  to  keep  an  address  book,  where  any  per- 
son interested  in  any  application  or  privilege  may  cause  to  be 
stated  some  place  in  British  India  where  notice  of  any  role  or 
proceeding  relating  to  the  privilege  may  be  served  upon  him. 

The  inventor  of  a  new  manufacture  may,  at  any  time  not  more 
than  one  year  and  not  less  than  six  months  before  the  time 
limited  for  the  expiration  of  an  exclusive  privilege,  apply  t« 
Governor  General  for  an  extended  term,  and  the  Governor- 
General  may,  if  he  is  of  opinion  that  the  inventor  has  not  been 
adequately  remunerated,  make  an  order  extending  the  term  for  a 
further  term  not  exceeding  seven  or,  in  exceptional  cases,  fourteen 
years,  and  upon  payment  of  prescribed  fees. 

The  exclusive  privilege  has  the  like  effect  against  her  Majesty 
as  against  a  subject,  but  the  officers  of  her  Majesty  may  use  the 
invention  on  terms  to  be  agreed  upon  with  the  inventor,  or,  in  de- 
fault of  such  agreement,  on  such  terms  as  may  be  settled  by  the 
Governor  in  Council. 

Defective  or  too  extensive  specifications  may  be  amended. 

The  exclusive  privilege  will  not  be  granted :  (a)  If  the  invention 
is  of  no  utility,  (6)  if  it  is  not  new,  (c)  if  the  applicant  is  not  the 
inventor,  (d)  if  the  specification  does  not  fulfil  the  requirements 
of  the  Act,  (c)  if  the  application  contains  a  wilful  or  fraudulent 
misstatement,  (/)  if  the  application  is  made  after  the  expiration  of 


INDIA  481 

a  year  after  the  acquisition  of  a  foreign  patent  for  the  same 
invention. 

The  invention  will  be  deemed  new  if  it  has  not  before  the 
application  been  publicly  used  in  British  India  or  the  United 
Kingdom,  or  publicly  known  there  by  means  of  a  written  publi- 
cation ;  but  the  public  use  or  knowledge  is  not  deemed  so  within 
the  meaning  of  the  Act  if  the  knowledge  has  been  obtained  surrep- 
titiously or  communicated  to  the  public  in  fraud  of  the  inventor 
or  in  breach  of  confidence,  provided  the  inventor  has  not  acquiesced 
in  the  public  use,  and  that  he  has  applied  for  leave  to  file  a 
specification  within  six  months  after  commencement  of  that  use. 

The  use  of  the  invention  in  public  by  the  inventor  or  his 
licensee  for  a  period  not  exceeding  one  year  prior  to  his  application 
is  not  deemed  a  public  use  within  the  Act. 

If  a  British  patentee  makes  an  application  in  India  within  a 
year  of  the  sealing  of  the  British  patent  the  invention  shall  be 
deemed  new  if  the  invention  was  not  publicly  used  or  known  in 
India  before  the  application,  notwithstanding  it  may  have  been 
known  or  used  in  India  or  the  United  Kingdom  before  the  date  of 
the  Indian  application ;  and  the  same  protection  is  given  to  the 
inventor  where  the  invention  may  have  become  known  or  used 
during  a  pending  application  in  the  United  Kingdom,  provided 
that  there  is  not  more  than  twelve  months'  interval  between 
the  British  and  Indian  applications.  The  inventor  is  also  pro- 
tected against  an  exhibition  of  his  invention  at  an  industrial 
or  international  exhibition  certified  as  such  by  the  Governor- 
General. 

The  exclusive  privilege  will  cease  if  it  is  declared  to  be 
mischievous  to  the  State,  or  prejudicial  to  the  public,  or  upon  the 
revocation  or  expiration  of  the  British  or  any  foreign  patent 
obtained  for  the  same  invention. 

The  Act  also  contains  a  series  of  provisions  relating  to  the 
proceedings  which  may  be  instituted  for  infringements. 

The  exclusive  privilege  may  be  declared  void  on  proceedings 
being  taken,  resulting  in  declarations  of  the  Indian  High  Court 
that  the  invention  is  of  no  utility  or  not  new,  that  the  applicant  was 
not  the  inventor,  that  the  specification  is  insufficient,  or  contains 
wilful  or  fraudulent  misstatements,  or  that  the  invention  is 
injurious  to  the  public. 

If  the  actual  inventor  proves  to  the  Court  that  the  applicant 
was  not  the  actual  inventor  and  that  the  privilege  was  obtained 
in  fraud  of  the  inventor,  the  Court  may  make  a  decree  vesting  the 
exclusive  privilege  in  the  actual  inventor,  and  may  require  the 

1 1 


Ml  \ 

applicant  to  pi'  >  the  actual  ii  I  profits  derived  bj 

him  from  tin-  invention. 

On  petition  of  any  person  interested,  and  proof  thai  the  ex- 
elusive  privilege  is  not  worked  in  India,  or  that  the  reasonable 
requirements  of  the  put. lie  cannot  be  supplied,  or  that  any  person 
is  prevented  from  using  or  working  an  in\.  ntion  of  which  he  is 
possessed,  the  Governor-General  may  order,  or  may  himself  grant, 
: ices  in  such  terms  as  he  may  deem  just 
Assignments  may  be  made  for  any  local  area. 

The  fees  payable  un<U -r  the  Act  are  as  follows  : 

Rupee* 

Application  for  leave  to  file  a  specification      .  10 

Filing  a  specification :;n 

Extension  of  time  for  filing  .        .        .        .20 
Before  the  expiration  of  the  4th,  5th,  6th,  7th, 

and  8th  years  of  the  privilege         .        .  50 
Before  the  expiration  of  the  9th,  10th,  llth, 

12th,  and  18th  years      ...  1 00 

Application  for  extension  for  a  further  term  50 

Continuance  of  term 100 

Application  for  amendment  ....  20 

:  lion  for  compulsory  licence      ...  50 

JAMAICA. 

The  law  of  patents  in  this  island  is  governed  by  the  .'• 
chap.  80,  of  1857. 

Every  inventor  desirous  of  obtaining  a  patent  must  petition 
the  Governor ;  the  petition,  accompanied  by  a  declaration  as  to 
the  invention,  and  a  specification  fully  describing  the  same,  is  tlu-n 
referred  to  the  Attorney-General,  who  gives  a  certificate  of  his 
allowance,  upon  which  the  Governor  issues  letters  patent. 

Drawings  are  to  be  furnished  in  duplicate. 

The  patent  must  be  brought  into  operation  in  Jamaica  within 
two  years  from  the  date  of  the  patent. 

The  term  of  the  grant  is  for  fourteen  years,  and  may  be 
extended  for  a  further  period  of  seven  years. 

The  patentee  is  at  liberty  to  assign  all  or  any  part  of  his  rights, 
and  patents  may  be  issued  to  assignees  of  any  persons  who  have 
obtained  patents  in  other  countries. 

The  Act  makes  provision  as  to  disclaimers,  and  provides  that 
a  patentee  may  add  a  specification  or  description  of  any  improve- 
ment upon  the  original  invention,  and  have  the  same  annexed  to 
the  original  specification. 


LEEWARD   ISLANDS— MALTA  483 

Provisions  are  also  made  as  to  pleadings  and  costs  in  actions, 
as  to  the  writ  of  scire  facias,  and  as  to  the  appointment  of 
Commissioners. 

If  it  is  proved  in  any  action  that,  by  mistake,  accident,  or 
inadvertence,  the  patentee  has  claimed  something  of  which  he  was 
not  the  inventor,  the  patent  shall  be  deemed  valid  for  so  much  of 
the  invention  as  shall  actually  be  his  own.  Treble  damages  are 
recoverable  by  a  patentee  from  unlawful  users  of  his  patented  in- 
vention. The  wrongful  marking  of  goods  in  imitation  of  a 
patentee's  mark  is  subject  to  a  penalty. 

All  applications  for  patents  must  be  accompanied  by  a  power 
of  attorney,  bearing  the  English  stamp  duty  ;  proved  as  required 
by  the  local  statute,  27th  Victoria,  chap.  17. 

The  letters  patent  bear  a  stamp  duty  of  61.  10s. 

The  fee  for  reference  to  the  Attorney- General  is  51. 

LEEWARD  ISLANDS. 

The  Leeward  Islands  consist  of  Antigua,  Montserrat,  St. 
Christopher,  Nevis,  Dominica,  Anguilla,  and  the  Virgin  Islands. 
The  law  of  patents  is  contained  in  the  Acts  No.  12  of  1876  and  No. 
16  of  1878.  The  Attorney-General,  the  Audi  tor- General,  and  the 
Treasurer  of  the  Presidency  of  Antigua,  with  such  other  persons 
as  may  be  appointed  by  the  Governor,  are  the  Commissioners  of 
Patents.  Patents  are  granted  for  the  term  of  fourteen  years  on 
applications,  including  a  petition,  declaration,  and  specification. 
The  proceedings  in  applications  for  patents  are  very  similar  to 
the  proceedings  under  the  British  Patent  Law  Amendment  Act 
of  1852.  The  patent  becomes  void  with  the  expiration  or  deter- 
mination of  any  earlier  patent  elsewhere  for  the  same  invention, 
and  no  patent  granted  in  the  colony  after  the  determination  of  any 
earlier  patent  elsewhere  is  valid.  The  Acts  provide  for  the  printing 
of  all  specifications,  registers  of  patents,  and  registers  of  proprietors. 
Actions  for  infringements  are  regulated  by  the  Code  of  Civil  Pro- 
cedure. The  Government  fees  amount  to  28Z.  in  the  case  of  every 
unopposed  patent.  A  duty  of  Wl.  is  payable  at  the  termination  of 
three  years,  and  a  duty  of  201.  is  payable  at  the  end  of  seven  years. 
The  stamp  duty  on  a  disclaimer  is  3Z.,  and  a  fee  of  2Z.  is  also 
payable  to  the  Attorney- General  in  respect  of  each  disclaimer. 

MALTA. 

An  ordinance  (No.  13  of  1889)  enacted  by  the  Governor  with 
the  consent  of  the  Council  provides  for  the  protection  of  inventions 
in  Malta. 

i  i  2 


484  MAURIT: 

Patents  may  be  obtained  by  first  and  true  inventors  for 
mechanical  contrivances,  processes  of  maiiufa* -lure,  patterns  or 
designs,  for  a  term  not  exceeding  fourteen  years. 

The  applicant  must  file  in  the  Chief  Secretary's  office  two 
copies  of  a  specification,  containing  a  declaration  that  the  appli- 
cant is  himself,  or  is  the  authorised  agent  of,  the  true  and  first 
inventor,  a  description  of  the  invention,  illustrated  with  neoeMftrjr 
drawings,  and  claims  for  the  inventions  or  combinations  claimed 
as  new  and  for  which  a  paU-nt  is  asked. 

A  fee  of  11.  is  to  be  paid  on  each  application,  and  every  two 
years  a  further  fee  of  11.,  with  5  per  cent,  upon  the  profits  which 
have  arisen  from  tin-  exclusive  manufacture,  the  amount  of 
which  is  to  be  declared  by  an  affidavit  of  the  applicant. 

The  patent  is  to  cease  whenever  it  is  proved  before  the  com- 
petent Civil  Court  that  tin-  invention  claimed  has  been  previously 
made  publicly  known  in  the  islands  or  elsewhere,  or  that  the 
applicant  is  not  the  first  inventor  or  his  representative. 

The  inventor  may  be  required  to  assign  his  right,  or  to  grant 
the  use  thereof,  for  a  consideration  to  be  determined  by  the  Civil 
Court  if  the  invention  has  not  been  put  into  action  within  twelve 
months  subsequent  to  the  concession,  or  if  its  working  shall 
have  been  suspended  for  twelve  months  continuously. 

Copies  of  specifications  may  be  inspected  in  the  Public  Registry 
and  in  the  Chief  Secretary's  office. 

An  inventor  on  filing  his  specification  may  request  that  it 
be  not  published,  and  may  within  a  year  file  a  second  amended 
specification,  modifying  the  first  and  setting  out  improvements 
of  details. 

Patents  granted  in  the  United  Kingdom,  in  the  Colonies,  or 
in  other  countries  may  be  extended  to  Malta  for  the  unex . 
term  of  the  original  patent. 

MAURITIUS. 

The  law  of  patents  for  this  colony  is  regulated  by  an  ordinance 
of  the  Governor  of  Mauritius  dated  May  22, 1875.  The  Governor, 
with  the  consent  of  the  Council  of  Government,  is  empowered  to 
grant  patents  for  inventions  for  a  period  not  exceeding  fourteen 
years,  and  for  such  further  term,  not  exceeding  fourteen  years, 
as  the  Governor  in  Council  may  think  fit.  The  patent  may  be 
applied  for  either  by  the  inventor  or  by  his  executors,  adminis- 
trators, or  assigns. 

The  application  must  be  in  the  form  of  a  petition  and  decla- 


NATAL  485 

ration,  and  must  be  accompanied  by  a  specification  and  drawings. 
These  papers  are  referred  to  the  Procureur-General ;  and  if  he 
approves  of  them,  he  is  authorised  to  issue  a  certificate  to  that 
effect,  and  the  inventor  is  thereby  provisionally  protected.  A 
payment  of  10Z.  is  to  be  made  to  the  Procureur-General  upon  the 
issue  of  his  certificate.  After  the  issue  of  the  certificate  the  appli- 
cation is  advertised  in  the  Gazette,  and  any  opposition  thereto 
must  be  entered  within  one  month  from  the  advertisement.  If  there 
is  no  opposition  the  patent  is  sealed  upon  payment  of  21.  to  the 
Receiver-General,  and  upon  deposit,  in  the  office  of  the  Colonial 
Secretary,  of  a  printed  copy  of  the  petition  and  specification. 

The  patentee  has  power  to  petition  the  Governor  for  allow- 
ance to  amend  the  specification.  No  patent  is  to  be  granted  for  an 
invention  in  respect  of  which  a  patent  has  been  granted  out  of  the 
colony  and  has  expired.  The  importer  into  Mauritius  of  a  new  in- 
vention is  not  deemed  an  inventor  unless  he  is  the  actual  inventor. 
The  use  of  an  invention  in  public  by  the  inventor,  or  by  his  ser- 
vants or  agents,  or  by  any  other  person  with  his  licence,  for  a 
period  not  exceeding  one  year  prior  to  the  date  of  the  petition,  is 
not  deemed  a  public  use  within  the  meaning  of  the  ordinance. 

An  inventor  having  obtained  British  letters  patent  may  obtain 
a  patent  in  Mauritius  provided  the  application  be  made  within 
twelve  months  from  the  date  of  the  letters  patent,  although 
previously  known  or  used  in  Mauritius,  provided  that  such  know- 
ledge or  use  in  Mauritius  was  not  prior  to  the  date  of  the  British 
patent. 

The  ordinance  also  regulates  the  proceedings  in  cases  of  in- 
fringement of  letters  patent. 

NATAL. 

The  law  of  patents  for  this  colony  is  governed  by  the  Colonial 
Act  No.  4  of  1870,  '  To  provide  for  the  granting  in  this  colony  of 
patents  for  inventions,'  and  is  based  on  the  provisions  of  the 
British  Patent  Law  Amendment  Act  of  1852.  The  law  No.  32 
of  1884  provides  for  the  extension  to  this  colony  of  the  provisions 
of  the  International  Convention. 

The  power  of  granting  letters  patent  for  fourteen  years  is 
vested  in  the  Lieutenant-Governor.  Applicants  are  required  to 
deposit  in  the  office  of  the  Attorney-General  a  description  of  the 
invention  or  a  provisional  specification ;  a  certificate  of  such  deposit 
is  given  to  the  applicant,  whereupon  the  invention  is  protected 
for  six  months.  In  lieu  of  the  provisional  specification  the  appli- 


•I  Sh  !    WALES 

cant  may,  if  he  thinks  fit,  deposit  a  complete  speniflcaiion  with 
the  Attorney-General.  The  applicant  may  give  notice  to  proceed 
immediately  after  the  deposit  of  his  specification.  Thn  notice 
to  proceed  is  advertised  in  the  Govc-i  •  -ozette.  After 

expiry  of  the  period  allowed  for  oppositions,  the  Attorney-General 
grants  his  warrant,  upon  which  letters  patent  are  sealed. 
letters  patent  are  void  unless  cert  -i  are  paid  at  the  expira- 

tion of  three  and  of  seven  years.  Tin-  letters  patent  also  expire 
with  the  determination  of  any  British  or  foreign  patent  of  an 
earlier  date.  Patentees  are  at  liberty,  with  leave  of  the  Attorney- 
nil,  to  enter  disclaimers  or  memoranda  of  alteration.  The 
Lieut  >vernor  is  empowered  to  grant  prolongations  of  the 

original  term  not  exceeding  fourteen  years.  The  law  provides 
that  a  '  Register  of  Patents '  and  a  '  Register  of  Proprietors ' 
shall  be  kept. 

All  actions  for  infringements  are  to  be  brought  in  the  Supreme 
Court. 

The  fees  for  sealing  the  letters  patent  are    £1  10s. 
Third  year's  duty     .         .         .         .         .     f    0 
Seventh  year's  duty          .        .        .         .    10    0 

Xi.WFOUSDLAXD. 

The  ?aw  of  patents  for  this  colony  is  di -fined  by  the  Consoli- 
dated Statutes  XV.,  chap.  54,  sect.  1. 

Inventors  desirous  of  obtaining  patents  in  Newfoundland 
must  present  a  petition  to  the  (iovernor  for  the  grant,  and  must 
deliver  into  the  office  of  the  Colonial  Secretary  a  specification  of 
the  invention,  and,  in  case  of  a  machine,  a  model  also.  The 
patent  is  granted  upon  this  petition,  after  a  reference  to  the 
Attorney- General. 

The  patent  is  granted  for  fourteen  years,  but  may  be  extended 
for  a  further  term  of  seven  years.  The  invention  must  be  worked 
in  the  colony  within  two  years  from  the  date  of  the  grant. 

The  patent  expires  with  the  determination  of  any  earlier 
patent  elsewhere. 

Ni:\v  SOUTH  WALES. 

The  Acts  of  the  Colonial  Legislature  relating  to  patents  are 
dated  December  6,  1832,  June  19,  1879,  and  July  8,  1887. 

Every  person  who,  upon  claiming  to  be  the  author  or  designer 
of  any  invention  by  his  agent  or  assignee,  shall  be  desirous  of 
obtaining  letters  patent,  shall  pay  to  the  Colonial  Treasurer  the 


NEW  ZEALAND  487 

sum  of  51.,  and  shall,  after  such  payment,  lodge  a  petition  to  the 
Governor  setting  forth  that  he  is  the  author  or  deviser  of  such 
invention,  or  the  agent  or  assignee  of  the  author  or  deviser,  and 
specifying  the  particulars  of  such  invention,  and  that  he  has  paid 
to  the  Colonial  Treasurer  the  sum  of  51.,  whereupon,  if  the  applica- 
tion is  approved  by  the  Minister  of  Justice,  the  Governor  may 
grant  letters  patent. 

Certificates  of  provisional  protection  may  be  obtained  for 
twelve  months,  on  payment  to  the  Colonial  Treasurer  of  2Z. 

The  Governor  will  grant  letters  patent  to  the  holder  of  a  certifi- 
cate of  provisional  protection  on  a  complete  specification  being 
filed,  and  on  further  payment  of  SI.  to  the  Treasurer. 

Letters  patent  are  dated  and  sealed  as  of  the  day  of  the  deposit 
of  the  application  for  provisional  protection,  but  no  action  can 
be  taken  in  respect  of  any  infringement  committed  before  the 
deposit  of  the  complete  specification.  Patents  are  granted  for 
not  less  than  seven  or  more  than  fourteen  years. 

Certificates  of  provisional  protection  and  letters  patent  are 
assignable.  Every  assignment  and  licence  must  be  registered  in 
the  office  of  the  Examiner  of  Patents.  Assignments  executed  in 
the  United  Kingdom  or  elsewhere  (not  being  within  the  Australian 
colonies)  must  be  registered  within  ninety  days  from  the  date  of 
execution. 

The  Governor  may  appoint  an  examiner  of  patents,  who,  under 
the  direction  of  the  Minister  of  Justice,  shall  examine  and  report 
to  that  officer  upon  all  petitions  for  letters  patent. 

The  Act  gives  no  power  to  amend  specifications  after  the 
patent  is  issued,  and  there  are  no  provisions  for  compulsory 
working. 

*NEW  ZEALAND. 

The  law  of  patents  for  this  colony  has  been  consolidated  by 
Act  No.  12  of  1889,  upon  the  lines  of  the  British  Patents 
Act,  1883. 

The  Governor  is  empowered  to  appoint  a  Registrar  and 
deputy  Registrar  of  Patents,  a  place  to  be  the  Patent  Office, 
and  local  offices,  and  Patent  Office  agents. 

Any  person  may  make  application  for  a  patent,  and  a  patent 
may  be  granted  to  several  persons  jointly,  of  whom  one  only  is 
the  inventor.  Patents  may  be  obtained  by  the  representatives  of 
deceased  inventors,  if  such  applications  are  made  within  six 
months  of  the  decease  of  the  inventor.  Mere  importers  cannot 
obtain  patents. 


488  NEW  ZEALA 

Applications  arc  to  be  made   in   the  form  act  the 

schedule  to  the  Act,  and  most  be  left  at  or  sent  by  post  to  the 
t  ( )ffice,  or  left  at  a  local  Patent  <  »:• 

Tlit-  application  must  be  accompanied  by  the  declaration  of 
the  inventor,  and  by  either  a  provisional  or  complete  specifica- 
tion signed  by  the  inventor ;  the  specification  mast  be  limited  to 
one  invention. 

The  Registrar  must  examine  every  application,  to  ascertain 
whether  the  nature  of  the  invention  is  described,  that  the  papers 
are  prepared  as  prescribed,  and  that  the  title  sufticimtly  describes 
the  subject  mutter  of  the  invention.  The  Registrar  has  power  to 
refuse  the  application,  or  to  require  its  amendment. 

If  a  provisional  specification  has  been  first  deposited,  the 
complete  specification  must  be  lodged  within  nine  months  from 
the  date  of  acceptance  of  the  application,  the  Registrar  must  ex- 
amine both  specifications  for  the  purpose  of  ascertaining  that 
tlu  complete  specification  has  been  prepared  as  prescribed,  and 
that  the  invention  is  substantially  the  same  as  that  described  in 
the  provisional  specification.  If  the  conditions  have  not  been 
complied  with,  the  Registrar  may  refuse  to  accept  the  complete 
specification  until  it  is  amended  to  his  satisfaction,  but  such  re- 
fusal is  subject  to  appeal  to  the  Court.  The  application  is  void  if 
the  specification  is  not  accepted  within  twelve  months  from  the 
date  of  application. 

The  acceptance  is  advertised  in  the  Gazette,  and  oppositions 
may  be  entered,  notice  being  lodged  within  two  months  of  the 
advertisement. 

The  Registrar  is  empowered  to  hear  the  applicant  and  the 
opposer,  and  to  determine  whether  the  grant  shall  be  made  or 
not ;  this  decision  is  subject  to  an  appeal  to  the  Court. 

On  the  expiration  of  two  months  from  acceptance,  if  there  is 
no  opposition,  or,  in  case  of  opposition,  if  the  determination  is  in 
favour  of  the  grant,  the  Registrar  is  to  seal  the  patent  with  the  seal 
of  the  colony.  Ever}'  patent  is  to  be  sealed  as  of  the  date  of 
acceptance,  but  no  proceedings  can  be  taken  in  respect  of  an 
infringement  committed  before  the  publication  of  the  specifica- 
tion. The  patent  when  sealed  covers  the  entire  colony  and 
its  dependencies  for  fourteen  years,  unless  the  patentee  fails  to 
make  the  prescribed  payments  within  the  prescribed  times.  Every 
patent  is  to  be  granted  for  one  invention  only,  but  may  contain 
more  than  one  claim ;  but  no  objection  can  be  taken  to  the 
patent  on  the  ground  that  it  covers  more  than  one  invention. 
Power  is  given  to  the  Registrar  to  allow  enlargement  of  the 


NEW  ZEALAND  489 

terms  (not  exceeding  three  months)  for  making  the  prescribed 
payments,  where  not  made  by  accident,  mistake,  or  inadvertence. 

Inventions  may  be  used  during  the  term  of  provisional  pro- 
tection, without  prejudice  to  the  patent  to  be  granted. 

Amendments  of  the  specifications  may  be  made  by  leave  of 
the  Eegistrar  subject  to  appeal  to  the  Court,  and  applications  for 
amendments  may  be  opposed  by  any  person.  No  amendment 
is  to  be  allowed  that  will  make  the  specification,  as  amended, 
claim  an  invention  substantially  larger  than,  or  substantially 
different  from,  the  invention  originally  claimed.  Leave  to  amend 
is  conclusive  as  to  the  right  of  the  party  to  make  the  amendment 
allowed,  except  in  case  of  fraud.  Amendments  may,  by  leave  of 
the  Court  or  a  judge,  be  made  during  actions. 

The  Governor  is  empowered  to  order  the  patentee  to  grant 
licences,  on  such  terms  as  he  may  think  right,  where  it  is  proved 
that,  by  the  default  of  the  patentee  to  grant  licences  on  reasonable 
terms,  the  patent  is  not  being  worked  in  the  colony,  or  the 
reasonable  requirements  of  the  public  are  not  supplied,  or  where 
any  person  is  prevented  from  working  to  the  best  advantage  an 
invention  of  which  he  is  possessed. 

The  Governor  may  grant  extensions  of  the  term  of  patents 
for  terms  not  exceeding  seven,  or,  in  exceptional  cases,  fourteen 
years,  upon  the  report  of  the  Court  that  the  patentee  has  not 
been  adequately  remunerated. 

Eevocations  of  patents  may  be  obtained  on  petition  to  the 
Court.  The  proceedings  with  respect  to  revocations  are  sub- 
stantially similar  to  those  contained  in  the  British  Act.  The 
proceedings  with  respect  to  infringements  are  also  substantially 
the  same  as  in  the  English  Courts. 

A  Eegister  of  Patents  is  to  be  kept,  containing  the  names  and 
addresses  of  grantees  of  patents,  notifications  of  assignments 
and  licences,  and  of  extensions,  amendments,  and  revocations. 

Patents  may  be  assigned  or  licensed  for  the  whole  colony,  or 
for  any  particular  part  of  it. 

The  exhibition  of  any  invention  at  industrial  or  intercolonial 
exhibitions  will  not  prejudice  the  patent  right  on  the  prescribed 
proceedings  being  taken. 

The  Eegistrar  may  require  the  patentee  to  furnish  a  model,  on 
payment  to  the  patentee  of  the  costs  of  its  manufacture. 

A  patent  will  not  prevent  the  use  of  an  invention  for  the 
navigation  of  a  foreign  vessel  within  the  colonial  jurisdiction ; 
but  this  protection  does  not  extend  to  vessels  of  any  foreign  state 
having  patent  laws  which  prevent  the  use  of  such  inventions  in 


490  '•    /K 

-i-U  iii  waters  within  tlie  jurisdiction  of  such  foreign 

The  Governor  has  power  to  deal  with  applications  for  patents 
for  improvements  in  instruments  or  munitions  of  war,  so  thai 
the  same  may  be  kept  secret,  pending  a  reference  to  her  Majesty's 
Principal  Secretary  of  State  for  Departm- 

I  '•  y  an  Order  in  Council  the  provisions  of  sect.  108  of  the 
British  Patents  Act,  1888,  is  applied  to  New  Zealand,  and  any 
person  who  has  applied  for  protection  in  Kngland  or  in  any  foreign 
state  a  party  uternational  <  tied  to  a 

patent  in  the  colony  in  priority  to  other  applicants,  and  such 
patents  shall  take  effect  from  the  same  date  as  the  application  in 
England  or  such  foreign  state,  provide*  1  that  the  application  in  the 
.y  is  made  within  twelve  month*  from  the  date  of  the  English 
or  foreign  application  ;  and  th--  benefit  of  the  same  provision  is 
extended  to  all  other  colonies  brought  within  the  same  provisions. 

The  registers  under  the  Act  are  open  to  public  inspection, 
and  extracts  may  be  obtained  of  all  entries  therein.  K  nines  in 
the  registers  may  be  corrected  by  the  Court. 

Appeals  from  the  Registrar  are  heard  before  the  Court  sitting 
at  Wellington. 

1-1  very  person  making  false  writing  in  registers  is  guilty  of  a 
misdemeanor. 

The  Registrar  has  power  to  correct  clerical  errors,  to  call  and 
examine  witnesses  on  oath,  papers  and  documents,  to  require  the 
parties  to  make  deposits  to  meet  costs,  to  order  payment  of  costs, 
and  to  adjourn  hearings ;  in  opposed  cases  he  must  have  the 
applicant  and  the  opposer  and  their  witnesses.  The  Registrar  is 
required  to  make  an  annual  report. 

No  person  is  entitled  to  call  himself  a  patent  agent  unless 
registered  as  a  patent  agent  in  pursuance  of  the  Act,  under  a 
penalty  of  201. 

The  Governor  in  Council  is  empowered  to  make  general  rules, 
as  to  publishing  copies  of  specifications,  drawings,  amend- 
ments, and  other  documents ;  and  as  to  publishing  and  selling 
indexes  and  abridgments  of  specifications,  providing  for  the 
inspection  of  Patent  Office  documents,  the  registration  of  patent 
agents,  and  generally  for  regulating  the  business  of  the  Patent 
Office,  and  all  tilings  placed  under  the  direction  or  control  of  the 
Registrar. 

No  provisions  for  compulsory  working  are  imposed. 

Penalties  are  imposed  on  persons  falsely  representing  articles 
to  be  patented. 


QUEENSLAND  491 

The  fees  prescribed  on  applications  for  and  renewals  of  patents 
are : 

On  lodging  application  with  provisional  or 

with  complete  specification    .         .  £  0   10s. 

On  filing  complete  specification          .         .  0   10 

On  application  to  amend     .                .         .  10 

On  obtaining  letters  patent         ...  2      0 
On  or  before  the  expiration  of  the  fourth 

year 50 

On  or  before  the  expiration  of  the  seventh 

year 10     0 

On  presenting  petition  for  extension  of  term  2      0 

QUEENSLAND. 

The  law  of  patents  for  this  colony  is  defined  by  Acts  No.  13  of 
October  13,  1884,  and  No.  5  of  September  4,  1886.  The  Act  of 
1884  established  a  Patent  Office  for  the  colony  under  the  control 
of  a  Eegistrar  of  Patents. 

The  provisions  of  the  Act  are  to  a  great  extent  similar  to 
those  of  the  British  Act  of  1883,  and  the  applications  and  proceed- 
ings thereunder  bear  a  strong  resemblance  to  those  of  the  mother 
country.  When  an  inventor  is  out  of  the  colony,  application  for 
the  patent  may  be  made  by  his  assignee. 

Applications  may  be  made,  accompanied  by  either  provisional 
or  complete  specifications  ;  these  applications  are  referred  to  ex- 
aminers, who  report  thereon  to  the  Eegistrar,  and  the  Eegistrar 
may  upon  this  report  either  refuse  applications  or  require  them 
to  be  amended.  The  complete  specification  must  be  left  within 
nine  months  from  the  application.  The  examiner  compares  the 
complete  with  the  provisional  specification  and  reports  to  the 
Eegistrar  thereon.  Unless  the  complete  specification  is  accepted 
within  twelve  months  from  the  date  of  application  the  application 
becomes  void.  These  dates  can,  however,  be  extended  on  applica- 
tion and  payment  of  prescribed  fees. 

The  grants  may  be  opposed,  the  Eegistrar  hearing  and  decid- 
ing on  oppositions  subject  to  appeals  to  the  law  officers. 

Patents  are  dated  as  of  the  day  of  application.  No  proceed- 
ings for  infringements  can  be  taken  until  after  the  grant  of  the 
patent. 

The  patent  is  granted  for  the  term  of  fourteen  years,  subject  to 
the  payment  of  the  duties  mentioned  below  ;  the  times  for  making 
the  payments  may  be  extended  for  three  months. 


l''l'  QUEEN8LAN 

Powers  are  given  for  amending  specifications  and  for  disclaim- 
ing any  actions,  and  for  the  grant  of  compulsory  licences,  and 
for  the  revocation  of  patents  similar  to  thone  in  force  at  home. 

A  register  of  patents  is  kept,  in  which  all  deeds,  licences,  • 
most  be  enter. 

The  Governor  in  Council  has  power  to  grant  extensions  of  the 
terms  of  patents  for  terms  not  exceeding  seven  or,  in  exceptional 
caeoo,  fourteen  years,  the  powers  given  being  very  similar  to  those 
of  tin  Privy  Council  with  respect  to  Hritish  patents. 

< nts  l.iinl  the  Crown,  but  officers  of  the  Crown  may  use  the 
invention  for  the  Crown  service  on  terms  to  be  agreed  on  with 
the  approval  of  the  Minister,  or,  in  default  of  agreement,  terms 
settled  by  the  Minister  after  hearing  the  parties. 

Provision  is  made  for  the  protection  of  patentees  by  legal 
proceedings,  and  remedy  is  given  to  persons  aggrieved  by 
groundless  threats  of  legal  proceedings 

The  representatives  of  a  deceased  inventor  may  obtain  patents. 

The  exhibition  of  an  unpatented  invention  at  industrial  or 
international  exhibitions  will  not  prejudice  patents  subsequently 
obtained  in  due  time. 

The  Minister  has  power  to  compel  the  patentee  to  furnish  a 
model  of  his  invention  on  payment  to  the  patentee  of  its  cost. 

The  patent  will  not  prevent  the  use  of  an  invention  for  the 
purposes  of  the  navigation  of  foreign  vessels  in  Queensland  waters. 

In  case  her  Majesty  makes  an  Order  in  Council  to  apply  the 
provisions  of  the  108rd  section  of  the  liritish  Act  of  1888  to 
Queensland,  the  international  arrangements  for  the  protection  of 
the  inventions  are  adopted,  and  similar  arrangements  are  made 
with  respect  to  India  or  any  other  liritish  possession  where  pro- 
visions exist  for  protecting  inventions  patented  in  Queensland. 

The  Governor  in  Council  has  power  to  make  general  rules  for 
the  regulation  of  the  business  of  the  Patent  Office. 

Persons  falsely  representing  articles  to  be  patented  are  liable 
to  fines  not  exceeding  52.  in  each  case,  and  there  is  also  a  penalty 
(not  exceeding  20/.)  imposed  on  an  unauthorised  assumption  of 
the  royal  arms. 

No  conditions  for  compulsory  working  are  imposed. 

The  fees  to  be  paid  are  as  under : 

On  application  for  provisional  protection      .    £'2    0*. 
On  tiling  complete  specification    .        .         .30 

or 
On  filing  complete  specification  with  first 

application 5     0 


ST.  HELENA— SOUTH  AUSTRALIA  493- 

Before  the  end  of  four  years          .         .         .£50 
Before  the  end  of  eight  years        .         .         .     10     0 

Or  in  lieu  of  the  51.  and  10L  fees  : 

Before  the  expiration  of  each  of  the  4th,  5th, 

6th,  and  7th  years 10 

Before  the  expiration  of  each  of  the  8th  and 

9th  years 1  10 

Before  the  expiration  of  each  of  the  10th, 

llth,  12th,  and  13th  years      .         .         .20 

ST.  HELENA. 

Under  Ordinance  No.  3  of  1872,  British  letters  patent  may 
be  extended  to  this  island.  The  patent  right  is  only  granted  to 
grantees  of  a  British  patent,  his  executors,  administrators,  or 
assigns.  The  duration  of  the  patent  is  limited  to  that  of  the 
British  patent.  To  obtain  protection  the  applicant  must  deposit 
certified  copies  of  the  British  patent  and  specification  in  the 
Eegistry  of  the  Supreme  Court  of  the  island.  These  documents 
are  open  to  public  inspection.  A  fee  of  1Z.  Is.  is  payable  on  filing 
the  specification. 

It  is  provided  that  all  cases  of  doubt  or  difficulty  not  pro- 
vided for  by  the  ordinance  shall  be  guided  and  governed  by 
the  English  law. 

SOUTH  AUSTEALIA. 

The  patent  law  of  this  colony  is  now  embodied  in  several  Acts, 
namely,  '  The  Patent  Act,  1877  '  (which  was  passed  December  21, 
1877),  and  the  Acts  No.  101  of  1878,  No.  201  of  1881,  and 
No.  421  of  1887. 

Every  applicant  for  letters  patent  must  present  a  petition  and 
declaration,  together  with  specification  and  drawings  in  duplicate. 
These  must  be  signed  by  the  applicant,  who  may  be  either  the 
inventor  or  his  assignee,  or  legatee  or  executor  of  a  deceased 
inventor;  the  declaration  being  made  before  any  competent 
authority,  and  the  specifications  and  drawings  attested  by  two 
witnesses.  The  place  and  date  of  signature  must  also  be  stated 
in  every  case.  The  documents  may  be  signed  under  power  of 
attorney  from  the  applicant.  The  exhibition  of  an  invention 
within  six  months  of  the  date  of  filing  the  petition  is  not  a  ground 
for  the  refusal  of  a  patent. 

Provisional  protection  can  be  obtained  for  twelve  months 
Patents  are  granted  for  fourteen  years,  and  expire  with  the  de- 


STRAITS  SETTLEMENTS 

nation  of  any  earl  :n  patent.    Extensions  may  be 

obtained  for  any  term  not  exceeding  seven  yean.    A  fee  of  20/.  is 
payable  upon  such  extension .  >tected  may  be  used 

in  foreign  vessels  navigating  the  colonial  waters,  notwithstanding 
the  patent     'I  ninent  may  use  the  patented  invention  on 

payment  of  an  agreed  royalty.    In  case  of  difference  the  amount 
to  be  paid  is  settled  by  arl  When  a  patent  is  deemed 

defective  in  consequence  of  the  specification  being  insuffick-i 

.0  patentee  having  claimed  more  than  he  had  a  right  to  claim, 
tli.-  Commissioner  may,  on  being  satisfied  that  the  error  arose 
from  inadvertence,  accident,  or  mistake,  and  was  not  fraud 
and  upon  the  surrender  of  the  patent  and  the  filing  an  amended 
specification,  grant  a  new  patent  for  the  unexpired  term  of  the 
original  grant.  A  fee  of  101.  is  payable  upon  such  a  grant. 
Disclaimers  or  memoranda  of  alteration  may  also  be  filed,  a  fee 
of  22  105.  being  payable  on  each  application.  Confirmation  of  an 
invalid  patent  may  be  obtained  when  it  is  proved,  or  has  been 
found  by  the  verdict  of  a  jury,  that  the  patentee  was  not  the 
true  and  first  inventor  by  reason  of  some  other  person  having 
invented  the  same  prior  to  the  date  of  the  patent.  A  fee  of  507. 
is  payable  for  such  confirmation.  A  caveat  may  be  filed,  and  the 
person  filing  the  same  will  be  entitled  to  notice  of  any  applica- 
tion being  made  for  a  patent  for  a  similar  invention,  within 
twelve  months  from  the  date  of  filing.  There  is  a  fee  of  I/, 
payable  upon  each  caveat. 

Patents  may  be  revoked  by  the  Governor  if,  after  three  years 
from  the  date  of  the  patent,  it  is  proved  that  neither  the  patentee 
nor  his  assignee  or  licensee  has  used  the  patented  invention  to  a 
reasonable  extent  for  the  public  benefit.  No  revocation  under  this 
clause  has  up  to  this  time  taken  place. 

Proceedings  may  also  be  taken  to  revoke  a  patent  by  scirc 
facia*. 

All  assignments  and  licences  must    be  registered  in 
Register  of  Proprietors.     The  registration  fee  is  11.  in  each  case. 

Penalties  are  imposed  for  unauthorised  use  of  the  name  of  a 
patentee,  or  for  counterfeiting  his  stamps,  mark,  or  devices. 

Fees  of  21.  10s.  each  have  to  be  paid  at  or  before  the  expira- 
tion of  the  third  and  seventh  years  respectively. 

STBAITS  SETTLEMENTS. 

The  ordinance  for  granting  exclusive  privileges  to  inventors 
is  No.  12  of  1871,  dated  November  15,  1871. 


TASMANIA  495 

Exclusive  privileges  may  be  obtained  by  actual  inventors  or 
first  importers  of  inventions  not  publicly  used  or  known  in  the 
colony.  An  invention  shall  be  deemed  new  if  it  shall  not,  prior 
to  the  time  of  applying  for  leave  to  file  a  specification,  have  been 
publicly  used  by  other  than  the  inventor  in  the  United  Kingdom 
or  the  colony  ;  but  inventors  having  obtained  British  or  British- 
colonial  patents  may  obtain  exclusive  privileges  during  the 
remainder  of  the  term  for  which  such  British  or  British -colonial 
patents  may  have  been  granted. 

Exclusive  privileges  are  obtained  by  inventors  petitioning  the 
Governor  in  Council  for  leave  to  file  a  specification,  whereupon 
the  Governor  may  make  an  order  authorising  the  petitioner  to 
file  a  specification.  If  the  specification  be  filed  within  six  months 
after  the  date  of  the  Governor's  order,  the  Governor  may  grant 
the  petitioner  an  exclusive  right  to  use  the  invention  in  the  colony 
for  the  term  of  fourteen  years,  and  for  such  further  term,  not  ex- 
ceeding the  term  of  fourteen  years,  as  the  Governor  may  direct, 
upon  petition  presented  to  him  at  any  period  not  more  than  one 
year,  and  not  less  than  six  months,  before  the  expiration  of  the 
original  term  of  the  exclusive  privilege.  Errors,  defects,  or  in- 
sufficiency in  specifications  may  be  corrected  by  disclaimers  or 
by  filing  amended  specifications. 

Actions  for  infringement  of  the  exclusive  privileges  may  be 
maintained  in  the  Supreme  Court  of  the  colony  ;  and  the  rules 
regulating  such  proceedings  appear  to  be  greatly  in  favour  of  the 
holders  of  exclusive  privileges.  Appeals  from  the  Supreme  Court 
may  be  made  to  her  Majesty  in  Privy  Council. 

The  stamp  on  a  petition  for  the  grant  of  an  exclusive  privilege 
is  50  dollars.  No  further  duties  are  payable. 

TASMANIA. 

The  law  of  patents  in  this  colony  was  established  by  an  Act 
passed  November  5,  1858,  amended  by  an  Act  passed  in  1883. 
Patents  are  always  granted  for  fourteen  years.  They  expire  with 
the  determination  of  any  earlier  foreign  patent  for  the  same 
invention.  They  will  not  prevent  the  use  of  the  invention  in 
foreign  ships  resorting  to  the  colony.  There  is  no  provision  for 
compulsory  working.  Although  the  law  provides  for  the  grant 
of  provisional  protection,  it  is  only  granted  on  very  full  specifi- 
cations. 

The  proceedings  to  obtain  patents  are  very  similar  to  those 
at  home,  and  the  provisions  with  respect  to  actions,  disclaimers, 


496  TRINIDAD 

etc.,  are  also  much  the  same.    Patents  may  be  repealed  by  action 
of  scirc  facia*. 

The  (iovcrniiient  fees  are  about  11.  105.  on  application,  and  a 
stamp  duty  of  1 5/.  is  to  be  paid  at  the  expiration  of  the  third  year, 
and  20/.  at  the  expiration  of  the  seventh  year  of  the  grant  By 
law  No.  2  of  October  20, 1884,  after  reciting  section  104  <  : 
Patents  Act  (United  Kingdom),  1888,  it  is  enacted  that  any  person 
who  has  applied  for  protection  for  any  invention  in  the  United 
Kingdom  shall  be  entitled  to  a  patent  for  his  invention  in  pri- 
ority to  other  applicants,  and  such  patents  shall  have  the  same 
date  as  the  protection  obtained  in  the  United  Kingdom,  provided 
the  colonial  application  is  made  within  seven  months  from  the 
application  for  protection  in  the  United  Kingdom ;  publication  in 
Tasmania  within  that  period  shall  not  invalidate  the  patent. 


TRINIDAD. 

The  ordinance  for  granting  exclusive  privileges  to  inventors 
is  No.  25,  dated  September  2,  1867. 

On  application  to  the  Registrar- General  of  the  island,  and  on 
delivery  to  him  of  a  declaration,  accompanied  by  a  specification, 
he  will  issue  a  certificate,  which  must  be  advertised  in  the  Official 
Gazette.  The  specification  may  be  delivered  open  or  in  a  sealed 
envelope.  In  the  latter  case  the  Registrar-General  will,  at  the 
end  of  six  calendar  months  from  the  date  of  the  certificate,  or  at 
an  earlier  day  at  the  request  of  the  patentee,  break  the  seal  of  the 
i-m  elope  and  register  the  specification. 

The  certificate  vests  in  the  applicant  the  exclusive  right  to 
the  invention  within  the  island  for  fourteen  years ;  but  if  at  any 
time  during  that  term  it  shall  be  made  to  appear  that  the  in- 
vention is  not  new  as  to  the  public  use  and  exercise  thereof  in  the 
island,  or  that  the  invention  is  prejudicial  or  inconvenient  to 
the  public,  then  the  applicant's  exclusive  privileges  will  become 
void. 

The  fees  payable  to  the  Registrar- General  on  leaving  the 
declaration  and  specification,  and  for  publication  of  same  in 
Gazette,  amount  to  10/.  10s. 

Disclaimers  may  be  entered,  a  fee  of  22.  being  payable  on 
each  entry. 

The  patentee  has  the  like  remedies  against  infringers  as  the 
grantee  of  any  letters  patent  would  be  entitled  to  in  the  like  case 
in  England. 


VICTOKIA  497 


VlCTOEIA. 

The  Act  53  Viet.  cap.  84,  passed  November  25,  1889, 
coming  into  operation  March  1,  1890,  consolidates  the  law  of 
patents  in  this  colony  and  repeals  all  former  Acts.  This  Act 
is,  in  most  respects,  similar  to  the  British  Patents  Act,  1883, 
but  there  are  differences  which  will  be  mentioned. 

The  Governor  in  Council  is  empowered  to  appoint  and  remove 
a  Commissioner  of  Patents,  and  also  as  many  examiners  as  may 
be  necessary.  The  Commissioner  is  to  have  a  seal  with  which  all 
patents  are  to  be  sealed. 

Any  person,  whether  a  British  subject  or  not,  may  apply  for 
a  patent.  The  applicant  may  be  the  actual  inventor ;  or  his 
assigns  ;  or  the  actual  inventor  jointly  with  the  assigns  of  a  part 
interest  in  the  invention ;  or  the  legal  representatives  of  a  deceased 
inventor,  or  his  assigns ;  or  (where  the  inventor  is  not  resident  in 
the  colony)  any  person  to  whom  the  invention  has  been  commu- 
nicated by  the  actual  inventor,  his  legal  representatives,  or 
assigns. 

The  application  must  be  made  in  the  form  given,  and  must 
be  accompanied  by  either  a  provisional  or  complete  specification. 
The  application  is  referred  by  the  Commissioner  to  an  examiner, 
who  must  ascertain  and  report  whether  the  nature  of  the  inven- 
tion is  fairly  described,  and  whether  the  application,  specification, 
and  drawings  are  prepared  in  the  prescribed  manner,  and 
whether  the  title  sufficiently  indicates  the  subject-matter  of  the 
invention,  and  whether,  to  the  best  of  the  knowledge  of  the 
examiner,  such  invention  is  not  novel,  or  is  already  in  the 
possession  of  the  public,  with  the  consent  of  the  inventor,  and 
upon  such  matters  as  the  Commissioner  may  require.  On  the 
report  of  the  examiner,  the  Commissioner  may  refuse  the  appli- 
cation, or  require  its  amendment.  The  applicant  has  power  to 
appeal  from  any  adverse  decision  to  the  Law  Officer,  who  is 
required  to  hear  the  applicant  and  the  Commissioner,  and  to 
decide  whether  the  application  shall  be  accepted  or  not. 

If  a  complete  specification  is  not  left  with  the  application,  it 
may  be  left  any  time  within  nine  months  from  the  application  ; 
if  not  so  left,  the  application  is  deemed  to  have  been  abandoned. 
The  Commissioner  has  power  to  extend  the  time  for  leaving  the 
complete  specification  for  one  month. 

The  complete  and  provisional  specifications  are  referred  by 
the  Commissioner  to  an  examiner,  who  is  to  ascertain  whether 

K  K 


YICTO! 

the  complete  specification  is  prepared  in  the  prescribed  manner, 
ami  v  he  complete  specification  describes  substantially  the 

same  invention  as  that  described  by  the  provisional  specific;. 

Tin-   Commissioner  may  refuse   the  application   upon  • 
report,  but  such  refusal  is  subject  to  appeal  to  the  Law  Officer. 

The  examiner's  reports  are  not  to  be  published  or  open  to 
public  inspection. 

Tin-  Commissioner  must  advertise  the  acceptance  of  the  com* 
plete  specification,  and  the  application  is  then  open  to  public 
inspection,  and  any  time  within  two  months  from  the  date  of 
the  advertisement  any  person  may  give  notice  of  opposition  to 
the  application,  on  the  ground  of  the  applicant  having  fraudu- 
lently, or  without  his  authority,  obtained  the  invention  from 
him,  or  from  a  person  of  whom  he  is  the  legal  representative 
or  assignee;  or  on  the  ground  that  the  invention  has  not  been 
communicated  to  the  applicant  by  the  actual  inventor,  his  legal 
representative,  or  assigns  (if  not  resident  in  Victoria) ;  or  on  the 
ground  that  the  invention  has  been  patented  in  Victoria  on  an 
application  of  prior  date  ;  or  on  the  ground  of  want  of  no 
or  of  the  invention  having  been  already  published  or  publicly 
used,  or  that  the  complete  specification  describes  an  invention 
other  than  that  described  in  the  provisional  specification,  and 
that  such  other  invention  forms  the  subject  of  an  application, 
made  by  the  opponent,  in  the  interval  between  the  leaving  of  the 
provisional  and  complete  specifications,  but  on  no  other  ground. 

The  opposition  is  heard  and  determined  by  the  Commissioner, 
there  being  an  appeal  from  his  decision  to  the  Law  Officer.  If 
the  Commissioner  is  satisfied  with  the  novelty  of  the  invention, 
and  there  is  no  opposition,  or,  in  case  of  opposition,  if  the  deter- 
mination is  in  favour  of  the  applicant,  the  Commissioner  issues  a 
warrant  for  the  sealing  of  the  patent,  and  the  patent  is  sealed  as 
soon  thereafter  as  may  be.  The  patent  is  sealed  as  of  the  day  of 
application,  but  no  legal  proceedings  can  be  taken  in  respect  of 
any  infringement  committed  before  the  publication  of  the  com- 
plete specification. 

Inventions  are  protected  from  the  consequences  of  use  and 
publication,  between  the  date  of  application  and  the  date  of  seal* 
ing  the  patent.  No  proceedings  can  be  taken  for  infringement 
until  the  patent  has  been  granted. 

Every  patent  covers  the  entire  colony,  and  is  for  fourteen 
years,  subject  to  payments  of  21. 10s.  before  the  expiration  of  the 
third  and  of  the  seventh  years  of  the  term. 

An  applicant  or  patentee  is  empowered  to  amend  the  specifi- 


VICTOKIA  499 

cation,  and  the  amendment  may  be  opposed,  these  proceedings 
being  similar  to  those  in  force  in  England. 

A  patentee  can  also  apply  to  amend  during  the  progress  of 
legal  proceedings  for  infringement  or  revocation. 

Where  an  applicant,  patentee,  petitioner,  or  objector  is  dis- 
satisfied with  the  decision  of  the  Law  Officer,  he  can  appeal  to 
the  Supreme  Court. 

A  Kegister  of  Patents  is  to  be  kept,  containing  in  chronological 
order  a  statement  of  all  patents  granted,  with  the  names  and 
addresses  of  the  grantees,  notifications  of  assignments  and 
licences,  memoranda  of  the  deposit,  and  filing  of  specifications, 
and  disclaimers,  of  amendments  of  patents,  and  specifications, 
and  of  the  expiry,  revocation,  or  other  determination  of  patents. 

Prolongations  may  be  obtained  of  patents  for  inventions  of 
merit  which  have  not  been  remunerative,  for  a  term  not  exceed- 
ing fourteen  years. 

Confirmation  of  invalid  patents  may  also  be  obtained,  in 
cases  where  it  has  been  found  by  a  court  of  law  that  a  portion  of 
the  invention  was,  unknown  to  the  patentee,  old  at  the  date  of 
the  application. 

Proceedings  may  be  taken  in  the  Supreme  Court  for  the 
revocation  of  patents,  upon  grounds  similar  to  those  of  the 
British  Patents  Act  of  1888,  with  the  additional  ground,  in  the 
case  of  patents  for  communications,  that  the  invention  was  not 
communicated  by  the  actual  inventor  or  his  assignee. 

Patent  rights  are  good  against  the  Crown,  but  may  be  used  for 
the  public  service  on  terms  agreed  upon  or  settled  by  arbitration. 
The  proceedings  and  pleadings  in  actions  for  infringements,  or 
revocation,  are  very  similar  to  the  British  proceedings.  Kemedy 
is  given  to  any  person  aggrieved  by  groundless  threats  of  legal  pro- 
ceedings. 

The  Act  contains  clauses  for  enabling  the  Governor  in  Coun- 
cil to  make  arrangements  for  the  mutual  protection  of  inventions 
with  any  of  the  other  Australian  Colonies,  New  Zealand,  or  Fiji, 
and  also  for  the  purpose  of  applying  the  provisions  of  sect.  103 
of  the  British  Patents  Act  of  1883  to  the  colony. 

Patents  for  foreign  inventions  may  be  granted  at  any  time 
within  one  year  of  the  date  of  the  foreign  patent,  notwithstanding 
prior  use  in  Victoria  during  that  period,  providing  such  use  has 
not  been  with  the  consent  of  the  inventor. 

A  patent  may  be  obtained  by  the  representatives  of  a  deceased 
inventor,  if  the  application  be  made  within  twelve  months  of  the 
death  of  the  inventor. 

K  K  2 


\i.i.\ 

exhibition  of  inventions  tit   industrial   or  mil 

exhibition*  will  not  prejudice  patent  rights,  if  the  exhibitor  glTM 
tin-  ('"iiiiiu  —  i.in.  i  HIM-  month's  notice  of  his  intention  to  C-M 
ami  application   for  tin-  pat  ..i«l«-  within   twelve  months 

from  the  opening  of  the  exhil>itiou. 

The  patent  will  not  prevent  the  use  of  tin  in\.  ntion  ii 
ships  in  the  colonial  waters,  but  this  provision  does  not  :«i'i-ly  to 
the  protection  of  subjects  of  foreign  states  not  conferring  recipro- 
cal advantages. 

Penalties  are  imposed  on  persons  marking  goods  with  the 
name  of  a  patentee,  without  leave  in  writing  of  the  patentee ; 
or  who  mark  goods  •  Pati-nt '  with  the  intention  of  imitating  the 
stamps  or  marks  of  the  patentee ;  or  who  put  to  sale  as  patented 
in  Victoria  any  article  not  patented  there,  for  the  purpose  of 
deceiving  tin-  public. 

\Yr~  -TKALM. 

The  law  of  patents  in  this  colony  is  comprised  in  an  Act  to 
amend  and  consolidate  the  law  relating  to  patents  for  invei. 
which  passed  the  Colonial  Legislature,  November  i?»>.  1^*>. 

The  Patent  Office  is  attached  to  the  department  of  the  Registrar- 
General.  Any  person  may  apply  for  a  patent,  and  a  person  not 
the  inventor  may  join  in  the  application  and  be  a  co-patentee. 
A  patent  will  also  be  granted  to  the  legal  representatives  of  a 
deceased  inventor.  The  application  must  be  accompanied  l>y 
cither  a  provisional  or  complete  specification.  The  application 
is  referred  to  an  examiner,  and  upon  his  report  the  Registrar 
will  acceptor  refuse  the  application.  The  complete  specific 
must  be  left  within  nine  months  from  the  date  of  application. 
Persons  interested  may  oppose  the  grant  on  the  ground  of  the 
opposer  being  interested  in  an  application  of  prior  date,  or  that 
the  examiner  has  reported  that  the  specification  compris. 
same  invention  as  is  described  in  a  previous  application.  The 
proceedings  before  the  Registrar  are  subject  to  appeal  to  the 
Attorney-General.  Specifications  are  not  published  unless  the 
applications  are  accepted.  Provisional  protection  is  granted  for 
the  period  between  the  date  of  application  and  the  sealing  the 
patent. 

Patents  are  granted  for  fourteen  years,  but  cease  in  case  the 
prescribed  payments  are  not  duly  made. 

The  Registrar  has  power  to  grant  leave  to  amend  specifica- 
tions, and  his  decision  in  applications  for  amendments  is  subject 
to  appeal  to  the  Attorney-General. 


WESTEEN  AUSTRALIA  601 

The  Governor  in  Council  can  grant  licences  in  cases  where  he 
is  satisfied  that  by  the  patentee's  default  to  grant  licences  the 
patent  is  not  worked  in  the  colony,  or  that  the  reasonable  require- 
ments of  the  public  are  not  supplied,  or  where  any  person  is  pre- 
vented from  working  or  using  to  the  best  advantage  any  invention 
of  which  he  is  possessed. 

A  Kegister  of  Patents  is  kept,  and  all  assignments,  licences, 
etc.,  must  be  registered  therein. 

The  Governor  in  Council  may  prolong  the  term  of  the  patent 
for  a  further  term  not  exceeding  seven  or,  in  exceptional  cases, 
fourteen  years. 

Proceedings  may  be  taken  for  revocation  of  patents,  the  pro- 
ceeding by  scire  facias  being  abolished. 

A  patent  is  valid  against  the  Crown,  but  the  Crown  officers 
may  use  the  invention  by  agreement,  or,  failing  agreement,  on 
terms  to  be  settled  by  the  Court. 

The  proceedings  relating  to  infringement  are  similar  to  those 
in  force  at  home.  Kemedy  is  granted  against  patentees  in  case  of 
groundless  threats  of  legal  proceedings. 

Provision  is  made  for  the  protection  of  unpatented  inventions 
at  industrial  or  international  exhibitions. 

No  person  can  receive  a  patent  for  an  invention  which  has 
been  previously  patented  in  Great  Britain  or  any  other  country, 
but  the  Governor  is  empowered  to  grant  letters  of  registration 
to  the  holder  or  assignee  of  any  such  patent  upon  payment  of  15Z., 
and  such  letters  of  registration  shall  be  deemed  to  be  letters 
patent  issued  under  the  Act,  and  shall  have  the  same  force  as 
letters  patent.  The  law  does  not  compel  any  working  of  the 
invention. 

The  fees  payable  before  the  expiration  of  four  years  and  of 
seven  years  are  41.  in  each  case,  and  a  fee  of  20Z.  is  payable  on 
every  extension  beyond  fourteen  years. 


INDEX. 


ACCOUNT  OF  PKOFITS 

in  action  for  infringement,  292.     See  DAMAGES 
before  filing  of  bill,  not  ordered  where  unnecessary  delay,  293 
in  taking,  plaintiff  entitled  to  know  defendant's  profits  prior  to  use  of 
his  invention,  293 

ACCOUNTS 

necessary  on  petition  for  extension  of  patent,  199.     See  EXTENSION,  etc. 

ACTION  FOE  INFRINGEMENT,  272.     See  INFRINGEMENT 

may  be  brought  in  any  division  of  High  Court  of  Justice,  272 
cannot  be  brought  before  patent  has  been  granted,  105,  272 
or  for  infringements  committed  before  publication  of  complete  specifi- 
cation, 272 

or  in  interval  between  expiration  of  patent  and  grant  of  new  term,  206 
plaintiff  cannot  have  both  damages  and  account  of  profits  in,  292 

„        may  lose   damages   for   infringements   committed  while  fees 
unpaid,  294 
who  may  bring — 

unregistered  assignee  cannot,  216,  230 

except  against  licensees  from   assignor   subsequent  to   and  with 
notice  of  assignment,  216,  230 

assignee  of  separate  part  of  a  patent  may  bring  separate,  218 

survivor  of  two  assignees  may,  218 

exclusive  licensee  cannot,  without  joining  patentee,  225 

unregistered  owner  may,  where  name  on  register  is  that  of  trustee 

for  him,  232 

particulars  of  breaches  to  be  delivered  in,  279.     Sec  PARTICULARS 
several,  by  one  plaintiff  may  be  consolidated,  276 

but  not  until  each  defendant  has  given  full  discovery,  276 
defence  to,  4 

invention  of  improvements  is  not,  246 

common  dilemma,  247 

particulars  of  objections  to  be  delivered  with,  280.   See  PARTICULAKS 

secret  process  set  up  as,  286 

every  ground  for  repealing  patent  by  scirc  facias  is,  309 
issues  in,  276.     See  ISSUES 
inspection  in,  277.     Sec  INSPECTION 

„          of  documents,  283 
interrogatories,  282,  284 

production  of  models  before  trial  of,  refused,  283 
trial  of,  to  be  without  jury  unless  otherwise  ordered,  234 

of  issues  of  fact  in,  may  be  before  a  referee,  285 

whose  report  equivalent  to  finding  of  a  jury,  285 

assessor  may  be  called  in  on,  285 


i  VORMKXT  -  continufd 

competent  penon  should  ascertain 
fact*  01  n 
Court  may  allow  patentee  in,  to  apply  to  amend  specification,  986 

experiment*  nin-li  f"i ,  ilmtrusted  by  < 

of  infringement  ..r  .  nlcM 

«-(  Ige,  880 

of  ai:' 

onus  of  proof. 

of  patentee,  how  fui  ti.lmisHible,  288 

further,  on  appeal,  888 

scientific  witnetaes.  888 
functions  of  ju.lp-  ami  jury  at  trial  of,  889 
damages,  299.     v,  IUMAUBM 
account  of  pi  U-COCNT  or  Paorm 

injunction*.  '.'. 

delivery  up  or  destruction,  896 

in  general,  no  stay  of  proceedings  pending  appeal,  294 
in  Scotlan.i.  •-".'•. 
in  Irelun.i. 
in  Isl«>  of  MUM,  L".ir. 

provision  as  to  leave  to  serve  writ  in  Scotland  or  Ireland,  296 
certificates  and  costs, '-".iT  <        .  ;n<  \TK  ;  COHTB 

•  Ini^  an.  ]>laintitT  may  be  restrained  from  advertising  positive  state- 
ment that  ilct.  inhiiit  has  infringed,  • 

and  \\ln-ic  lie  has  obtained  leave  to  amend  specification  maybe 
ini.l    fiom    issuing    threatening   circulars   to  defendant's 
customers,  :un; 

TO  RESTRAIN  THREATS,  303 
may  IK*  brought  under  section  32  of  the  Act,  303 

unless  person  tlm  iit«-nin^  commences  and  prosecutes  with  due 
diligence  action  for  infringement,  803 

which  includes  action  for  royalties  on  articles  alleged  to  be 

out>i<le  lirencr. 
and  if  action  fails  he  is  not  liable  in  threat  action  unless 

Icnce  of  malice,  304 

infringement  action  need  not  be  against  plaintiff  in  threat 
action.  au7 

but  infringement  of  person  sued  must  be  of  same  cha- 
racter. :t(>7 

interpretation  of  words  '  due  diligence/  307 

plaintiff  in,  must  show  non -infringement  or  that  patent  invalid,  304 
if  the  latter,  defendant  entitled  to  particulars  of  objections  and 

other  rights  as  if  plaintiff  in  action  for  infringement,  304 
result  of  cases  relating  to,  304 
threats : — 

letter  from  patentee's  solicitor,  305 
notices  by  patentee  to  users  of  plaintifT's  invention,  305 
letter  written  -without  prejuii 
private  letter  to  customer  of  plaintiff,  305 
interlocutory  injunctions  in,  306 

must  not  be  moved  for  cr  parte,  30C 

refused  where  defendant  undertakes  to  bring  with  due  diligence 
action  for  infringement,  306 

but  granted  if  undertaking  not  performed,  306 
granted  to  restrain  threats  by  plaintiff  in  pending  action  for  in- 
fringement after  leave  to  apply  for  disclaimer  obtained,  306 


INDEX  505 

ACTION  TO  EESTRAIN  THREATS— continued 
damages  in,  303,  308 

no  certificate  in,  that  validity  of  patent  came  in  question,  308 
costs,  308 

ADVERTISEMENT 

of  acceptance  of  application,  95 

of  complete  specification,  104 
of  application  for  amendment,  178 
of  amendments  made,  180 
of  application  for  extension,  193 

AGENTS.     See  PATENT  AGENT 
may  act  for  applicants,  378 
may  not  sign  applications,  378 
may  not  apply  in  name  of  owner  for  injunction,  225 
for  infringers  liable  for  infringements,  265 
cannot  present  petition  for  revocation,  310 

AMENDMENT  OF  SPECIFICATION,  178 

might  be  by  disclaimer  under  old  law,  178 

but  now  under  Act  of  1883  by  disclaimer,  correction,  or  explana- 
tion, 178 

meaning  of  '  explanation,'  183 

where  action  for  infringement  or  proceeding  for  revocation  of  patent 
pending,  leave  of  Court  must  be  obtained  to  apply  for,  179,  184 
and  must  be  by  way  of  disclaimer,  184 
terms  upon  which  leave  given,  185 
discretion  of  the  Court  is  absolute,  185 
office-copy  of  judge's  order  must  be  left  at  Patent  Office,  184 
writ  of  prohibition  to  prevent  comptroller  proceeding,  refused,  184 
after  judgment,  leave  of  Court  unnecessary,  184 
where  several  proceedings  pending,  unnecessary  to  apply  for  leave 

in  all,  184 
after  specification  becomes  public  must  be  under  section  18,  179 

other  amendments  must  be  under  sections  7  and  9,  179 
procedure  as  to,  under  section  18  : — 

request  in  writing  for  leave  for,  to  be  made,  178 

and  to  be  advertised,  178 

any  person  may  give  notice  of  opposition  to,  within  one  month,  178 
comptroller  to  notify  opposition  to,  to  applicant,  178 

and  hear  and  decide  case,  subject  to  appeal  to  law  officer, 

178 

law  officer,  if  required,  to  hear  applicant,  and  opponent  if 
entitled  to  be  heard,  179 

and  decide  if,  and  on  what  conditions,  to  be  allowed,  179 
where  no  opposition,  or  opponent  does  not  appear,  comptroller  to 
decide  if,  and  on  what  conditions,  to  be  allowed,  179 
if  leave  refused  applicant  may  appeal  to  law  officer,  179 
law  officer,  if   required,  to   hear   applicant  and  comptroller, 
and  may  decide  if,  and  on  what  conditions,  to  be  allowed,  179 
when  made,  to  be  advertised,  180 
rules  as  to,  377,  391 
form  of  application  for,  386,  398 

not  allowed  to  substantially  enlarge  or  alter  invention  claimed,  179, 186 
no  prohibition  lies  to  law  officer,  180 

but  amendment  allowed   by  comptroller   or   law  officer  may  be 
questioned  in  court  of  law,  180 

ought  to  be  allowed  at  patentee's  peril,  when  question  doubt- 
ful, 186 


INDEX 

AMEXUMEXT  or  8r»onoA.Tio»— nmtttuud 

allowed  (or  insertion  of  correct  description  of  drawing,  184 
leave  for,  conclusive  as  to  right  of  party  to  make,  179 

except  in  case  of  fraud.  179 

when  allowed,  deemed  to  form  part  of  the  specification.  179 
opposition  to:— 

opponent  most  have  interest,  180 

grounds  of,  1M 
comptroller  may  impose  conditions  on  giving  leave  for,  180 

but  cannot  give  costs,  180 

conditions  under  old  law,  181.  188 

the  Act  of  1888,  188 

restriction  on  recovery  of  damages  for  use  of  invention  before,  188,  894 
by  disclaimer : — 

may  reject  claim  to  any  of  the  parts  where  both  combination  and 
subordinate  parts  claimed,  186 

may  not  strike  out  whole  of  claim  and  insert  claim  to  subordinate 
part,  186 

should  leave  sufficient  to  support  patent,  187 

may  cut  down  claim  for  all  methods  to  particular  method  de- 
scribed. 1-7 

cases  under  the  old  law,  187-189 
powers  of  the  Master  of  the  Rolls  as  to,  189 
as  to  clerical  errors,  190 
costs  of,  190 

AMENKMENT  of  documents  by  comptroller,  324 

AMERICA,  UNITED  STATES, 
patent  laws  of,  421 

ANTICIPATION.     Sec  1'rni.ic.vTiox;  USER 

APPEAL 

from  comptroller  to  law  officer,  95,  103,  159,  178 

none  from  law  officer  in  cases  of  opposition  to  grant  of  patent  or  of 

amendment  of  specification,  161,  180 

none  from  Board  of  Trade  in  cases  of  compulsory  licences,  886 
rules  on  appeals  to  law  officers,  406 
form  of  notice  of,  404 

APPLICANT.     See  APPLICATION  FOB  PA; 

for  letters  patent  must  be  inventor  or  inventors,  86,  30 

but  non-inventors  may  join  in  application,  86 
who  may  be,  86-88 

any  person,  British  subject  or  not,  86.     See  FOREIGN  PATEKTS 

body  corporate,  86 

first  importer,  86.     See  COMMUNICATION,  etc. 
but  must  reside  in  United  Kingdom,  87 

infants  and  women,  88 

legal  representative  of  deceased  inventor,  88 
on  death  of,  patent  may  be  granted  to  legal  representative,  88 

who  may  perhaps  leave  complete  specification,  104 

and  patent  may  be  sealed  within  twelve  months  after,  171 

APPLICATIONS, 

patents  for  SI-BJECT-MATTEB 

cases  as  to,  77-85 

APPLICATION  FOB  PATENT, 

who  may  make,  86-88.     Sec  APPLICANT 
joint  applications,  86 


INDEX  507 

APPLICATION  FOR  PATENT — continued 

may  be  opposed,  159.     See  OPPOSITION  TO  GRANT 
to  be  made  in  prescribed  form,  89 

and  left  at,  or  sent  by  post  to  Patent  Office,  89 

with  specification,  provisional  or  complete,  89.     See  SPECIFICATION 
to  be  referred  to  examiner  together  with  specification,  89 

on  whose  report  comptroller  may  require  amendment,  89 

subject  to  appeal  to  law  officer,  95 
acceptance  of,  to  be  notified  to  applicant  and   advertised  in  official 

journal,  95 
if,  after  being  made,  another  application  with  similar  title  is  made, 

comptroller  may  decline  to  proceed  with  latter,  95 
rival  applications,  164-166 

if  abandoned  or  become  void,  specification  not  to  be  published,  96 
deemed  abandoned,  if  complete  specification  not  left  within  due  time,  103 
becomes  void  unless  complete  specification  accepted  within  due  time,  104 
by  representative  of  deceased  inventor,  must  be  within  six  months,  96 
form  of,  393 

form  of,  on  communication  from  abroad,  395 
rules  regulating  procedure  on,  380,  381 

ARGENTINE  KEPCBLIC, 
patent  laws  of,  425 

ASSESSOR 

Judicial  Committee  in  extension  cases  may  call  in  the  aid  of,  195 
may  be  called  in  in  an  action  or  proceeding  for  infringement  or  revoca- 
tion of  a  patent,  285 

ASSIGNEE  OF  LETTERS  PATENT.     See  ASSIGNMENTS 
may  disclaim,  181 

of  part  may  bring  separate  action  for  infringement,  218 
of  share  of  profits  may  call  on  licensee  for  account,  218 
of  original  assignee  takes  subject  to  covenants  if  he  has  notice,  218 
survivor  of  two,  may  sue  for  an  infringement  committed  during  life  of 

the  other,  218 

for  valuable  consideration,  in   infringement   action  against  patentee 
assignor,  defence  of  want  of  novelty  not  available,  219 
unless  patent  made  invalid  by  assignee's  disclaimer,  219 
or  assigned  to  him  by  trustee  of  bankrupt  patentee,  219 
position  of,  before  registration  of  assignment,  230 

ASSIGNMENTS  OF  LETTERS  PATENT,  216-219.     See  ASSIGNEE 
should  be  registered,  216 
rules  as  to  registration  of,  216 
registry  of,  216,  228 
ought  to  be  by  deed,  216 
proper  covenants  in,  216 
if  patent  obtained  under  Act  of  1852,  217 
for  a  place  or  district,  217 

no  implied  warranty  of  the  patent  on  contract  for,  217 
purchaser  should,  prior  to  entering  into  contract  for,  have  search  made 

as  to  novelty  of  patent,  217 
joint  patentee  can  only  assign  his  share,  218 
co-owner  of  patent  may  sue  alone  for  recovery  of  profits,  218 
by  partner  to  third  party  with  notice  of  partnership,  219 
may  include  contract  to  assign  future  patents  relating  or  similar  to 

assigned  patent,  219 
body  corporate  may  take,  and  be  registered  as  proprietor  in  corporate 

name,  219 
by  executors  good,  though  probate  registered  after  it,  231 


508  INDEX 


or  LBTTBM  T  \nirt—  continued 
where  two  or  more  conflicting,  registered,  281 
to  Secretary  of  War  for  certain  invention 
case*  on,  216-219 

ACHTRALIAV  COLONIES, 

patent  laws  of.    See  under  namet  of  the  different  eoloniet. 

A      -II.M. 

patent  law*  of,  426 

BAHAMA  ISLAND*, 

patent  laws  of,  470 

BARBADOS, 

patent  laws  of,  471 

BELGIUM, 

patent  laws  of,  428 

BOARD  or  TMADE, 

power  to  order  patentee  to  grant  licences,  226.    See  LICENCES,  COM- 

PULSORY 

no  appeal  from  such  order,  226 
no  power  to  award  costs,  226 
power  to  make  rules,  825,  331 
appoints  officers  of  the  Patent  Office,  323 

Bourn, 

patent  laws  of,  429 

BORNEO  (BRITISH  NORTH), 
patent  laws  of,  472 

BRAZIL, 

patent  laws  of,  430 

BREACHES.    See  PARTICULARS  or,  etc. 

BRITISH  (Ji  UN\, 

patent  laws  of,  472 

BRITISH  II.  .\i-  CRAB, 
patent  laws  of,  473 

CANADA, 

patent  laws  of,  473 

CAPE  or  GOOD  HOPE, 
patent  laws  of,  477 

CARRIERS, 

of  infringing  articles,  265 

CASKS, 

amendments  of  specifications,  179-190 

amount  of  invention  required  to  support  patent,  67-76 

applications,  patents  for,  77-85 

assignments  and  licences,  216-225 

chemical  processes  and  products,  19,  254-2CO 

combinations,  70-75 

claims,  140-151,  157,  158 

drawings,  106,  107 


INDEX  509 

CASES  —continued 

extension  of  patent,  192-215 

infringement,  234-302 

injunction,  272-276 

inventor,  true  and  first,  29-33 

licences,  220-225 

novelty,  27-65 

oppositions  to  grant  of  patents,  160-169 

patentee,  who  may  be,  86-88 

partnership,  225 

principles,  6-11 

processes,  11-13,  254-260 

prior  user  by  inventor,  45,  58 

experiments,  62 
public  user,  34-51 
publication  in  printed  books,  51-53 
publication  in  specification  under  prior  patent,  54-58 
registration,  229-232 
revocation  of  patents,  309-313 
specification,  provisional,  97-99,  107-112 

„  complete,  103-151 

,,  interpretation  of,  152-158 

subject-matter,  6-20 
threats,  303-308 
title  of  patent,  91-93 
utility,  21-26 
Eeports  of  Patent,  to  be  issued,  324 

CAVEAT 

against  extension  of  patent,  194 

as  to  grants  of  patents  and  amendments,  104 

CERTIFICATE 

in  action  for  infringement,  297,  299 

when  given  to  entitle  plaintiff  to  full  costs  in  future  actions,  300 

not  available  in  action,  begun  before  certificate  given,  301 

what  is  sufficient,  301 

whether  given  in  action  to  restrain  threats,  308 

not  given  on  petition  for  revocation,  313 

Vice-Chancellor  of  County  Palatine  of  Lancaster,  301 
under  hand  of  comptroller,  primd-facie  evidence,  326 
of  payment  or  renewal,  385 
form  of  application  for,  400 
form  of,  400 

CEYLON, 

patent  laws  of,  477 

CHANNEL  ISLANDS, 

not  now  included  in  patent,  171 

CHEMICAL  PKOCESSES, 
when  patentable,  19 
and  products,  cases  as  to  infringement  of  patents  for,  254-260 

CHILI, 

patent  laws  of,  431 

CLAIMS.     See  SPECIFICATION,  COMPLETE 

complete  specification  must  contain,  102 
suggestions  as  to  preparing,  140 
interpretation  of,  157.     See  CoNSTBUCTioN 


510  INDEX 

CLAIM**  or  PATEXTABLB  IxTExnoxa,  14.    Stt  Hciuecr-MArnui 

.ICAL  KHKOHM. 

correction  of,  i ;  1 7 1 

form  of  request  for  correction  of,  408 
in  *|>ecifications,  etc.,  105,  100,  824 

COLOMBIA, 

patent  laws  of,  432 

COLONIAL  ARRAXOKMENTH,  822,  850 

COLONIES  (BRirnui). 
patent  laws  of,  470 

CoilM  T- MATTE  R 

of  known  parts  are  patentable.  16 

how  to  be  treated  in  specifications,  181 

caws  on,  70-75 

cases  as  to  infn  f  patents  for,  248-254 

propositions  as  to,  250 

if  patent  is  solely  for,  nothing  can  be  infringed  bat  the  use  of  lh> 

combination,  '2~<l 
to  protect  subordinate  parts  and  minor  combinations  it  is  necessary  to 

claim  th.-m,  •_'»:• 

iiii-l  th.-y  mii-t  be  new,  useful,  and  paten  table  per*-. 
the  taking  of  subordinate  part  or  parts  of  may  be  an  infringement  of 

patent.  -J.VJ 
manufacture  and  export  of  parts  of. 

COMPLETE  SPECIFICS;  SI-K,  in.  moN,  COMPLETE 

CoMMT'NK   MI"N    FROM    AnRO\I>. 

patent  for  invention  which  in,  may  be  obtained,  86 

but  applicant  must  be  resident  in  United  Kingdom.  87 
no  patent  for  communication  by  British  subject  residing  in  ' 

Kingdom  to  another,  88 
form  of  application  for  patent  for,  395 

COMPANY.    See  CORPORATE  BODY 

COMPTROLLER-GENERAL  or  PATENTS, 
duties  of,  323 

may  require  amendment  of  documents,  95,  102,  103 
appeal  lies  to  law  officer  from,  95,  KM.  1    '    17- 
may  require  statement  in  writing  from  applicair 
can  authorise  amendment  of  specification,  17'.' 
may  refuse  patent  if  contrary  to  law  or  morality,  324 
may  correct  clerical  errors,  106,  324 
other  powers  of,  324 

discretionary  power  of,  not  to  be  exercised  adversely  to  applicants  with- 
out giving  them  opportunity  of  being  heard,  324 
decisions  of,  to  be  notified  to  parties,  379 
general  powers  of  amendment  by,  324 
power  of,  to  dispense  with  evidence,  324 
may  apply  to  law  officers  for  directions,  325 
certificate  of,  to  be  evidence,  326 
is  to  issue  Illustrated  Journal  of  Patented  Invention-. 

and  reports  of  patent  cases,  324 

and  other  publications,  324 
to  make  annual  report,  325 
if  absent,  Board  of  Trade  may  appoint  officer  in  his  place,  325 


INDEX  511 

COMPULSOBY  LICENCES,  225.     See  LICENCES,  COMPULSORY 

CONGO  FREE  STATE, 
patent  laws  of,  432 

CONSTRUCTION  OF  SPECIFICATION,  152 

specification  to  be  construed  according  to  ordinary  meaning,  153 

and  with  reference  to  state  of  knowledge  when  it  was  prepared,  156 

benevolent  construction,  153 
both  words  and  drawings  looked  at,  106 
prior  specifications  as  showing  anticipation,  154 
evidence  to  explain  technical  terms,  155 

patentee's  evidence  as  to  meaning  of  specification  inadmissible,  155 
claims,  construction  of,  157 

with  reference  to  whole  context,  142,  157 

when  two  meanings  possible,  157 

construed  as  merely  appendant,  157 

cases  as  to,  158 

CONVENTION,   INTERNATIONAL,   373.     See  FOREIGN   PATENTS;   INTERNATIONAL 
CONVENTION 

COPIES  OF  PATENT  OFFICE  DOCUMENTS, 

certified  and  sealed,  receivable  in  evidence,  326 

to  be  furnished  on  payment  of  fee,  327 
sent  to  Scotland,  Ireland,  and  the  Isle  of  Man,  326 
and  to  be  evidence  in  courts  there,  327 

CORRECTION.     See  AMENDMENT  OF  SPECIFICATION 

CORPORATE  BODY  ; 

and  inventor  may  apply  jointly  for  patent,  86 

may  take  assignment  of  patent,  219 

may  be  registered  as  proprietor  by  its  name,  219 

COSTA  EICA, 

patent  laws  of,  433 

COSTS, 

comptroller  no  authority  to  award,  169 

Board  of  Trade  no  power  to  award,  226 

law  officer  may  order,  in  any  proceeding  before  him,  169,  349,  407 

on  oppositions  to  patents,  169 

on  amendments  of  specifications,  180,  190 

on  application  for  extension  of  patent,  208 

on  revocation  of  patent,  313 

in  action  for  threats,  308 

in  actions  for  infringement,  297 

directors  of  limited  company  infringing,  may  be  ordered  to  pay 

personally,  301 

if  court  certifies  that  validity  of  patent  came  in  question,  plaintiff 
may  have  full  costs  in  subsequent  actions,  300 

though  patent  not  contested  in  subsequent  action,  301 

but  if  contested  on  different  grounds,  full  costs  refused,  300 

CROWN,  THE, 

power  of,  to  grant  patent,  1-3 
does  not  guarantee  the  validity  of  letters  patent,  5 
must  be  supplied  with  invention  if  required  or  patent  becomes  void,  173 
letters  patent  obtained  under  Patent  Act,  1883,  of  same  effect  against,  as 
against  subject,  175,  267 


/ill'  IM 

Ciiowx.  T 

officers  of  departments  in  ncrviee  of,  may  use  invention  on  tana  approved 

may  use  inv<  mi»ti  \\iih..  where  patent  applied  for  before  com- 

BMOMBMI 

patent  ~  i>f  munition*  of  war,  right*  of  a*  t 
may  oppoce  extension  of  | 

KaviiiK  for  en  i  •>;,•.  it  i\  i  <>f,  868 

if  misled  at  to  imvrlty  nf  invcnti-m.  j>at<  nl  void,  98 

CUBA, 

patent  laws  of.     .SV<-  B 

is  KOH  Ixritix<;r\ir.N 
how  estimate!  :«» 

cannot  be  granted  in  addition  to  account  of  profits,  29S 
but  where  separate  proceedings  against  manufacturer  and  user,  plaintiff 

may  have  account  of  profits  against  former  and  damages  against 

bttar,S9l 
inquiry  as  to,  292 
plaintiff  not  compelled  to  accept  same  royalty  from  litigant  as  from 

others,  293 
in  estimating,  material  question  is  patentee's  actual  loss,  not  infringer'i 

profit 

for  use  of  invention  before  amendment,  294 
for  infringement  committed  while  duty  overdue  on  patent,  294 

DATE  or  LETTERS  PATKXT,  171 

PKATII 

of  inventor  before  applying  for  patent,  legal  representative  may  apply 

within  six  months,  88 

of  applicant,  legal  representative  may  obtain  patent,  88 
and  may  perhaps  leave  complete  specification,  104 
patent  may  be  sealed  within  twelve  month 

of  patentee,  probate  of  his  will  or  letters  of  administration  should  be 
registered,  229 

UUTKMB, 

how  to  be  made,  380,  393,  395 

on  application  for  patent,  89 

evidence  taken  by,  in  opposition  to  patents,  160,  384 

and  to  amendments  of  specifications,  386 

nee  may  be  by,  in  compulsory  licences,  887 

l>i  HMii.'xs  or  TERMS  IN  PATENTS  ACT,  1883,  353,  363 


ri-   AXI>  DE8TBCCTION 

of  infringing  articles  may  be  ordered  in  action. 
practice  as  to,  when  patent  is  for  combination,  295 

1>I  \MUIK. 

patent  laws  of,  433 
DISCLAIMER.     See  AMENDMENT  or  SPECITICATION 

DISCOVERT.    See  IXVKXTIOX 

when  several  concurrent  actions,  actions  not  consolidated  till  all  defen- 
dants have  given,  276 

DOCUMENTS, 

size,  etc.,  of,  378 
amendment  of,  324 


INDEX  513 

DOCUMENTS  -continued 

may  be  sent  by  post,  356,  379 
certified  copies  of,  355,  390 

DRAWINGS 

to  accompany  specification,  if  required,  94,  106 

but  complete  specification  may  refer  to  those  in  provisional,  106, 369 
not  to  be  referred  to  as  descriptive  of  part  not  described  in  letterpress  of 

specification,  107 

omitted  by  inadvertence  cannot  be  supplied,  107 
erroneous,  will  not  in  all  cases  vitiate  patent,  130 
amendment  of,  102,  178 
rules  as  to,  382 

DUPLICATE  OF  PATENT, 

if  original  lost  or  destroyed,  may  be  granted,  174 
form  of  application  for,  402 

DURATION  OF  PATENT,  170 

may  be  extended  by  petition  to  the  Queen  in  Council,  191.     See  EXTEN- 
SION OF  LETTERS  PATENT 

ECUADOR, 

patent  laws  of,  434 

ENACTMENTS  BEPEALED,  362,  366 

ENLARGEMENT 

of  time  for  paying  fees,  342,  386 

for  leaving  specification,  102,  404 

for  accepting  specification,  104,  405 

for  sealing  patent,  170 
forms  of  application  for,  401,  404,  405 

ERRORS.     See  CLERICAL  ERRORS 

EVIDENCE, 

in  opposition  to  grant  of  patents,  160,  384 
to  amendments  of  specifications,  387 
on  applications  for  compulsory  licences,  387 
on  applications  for  extensions,  195-197 

on  actions  for  infringement,  287.     See  ACTION  FOR  INFRINGEMENT 
official  documentary,  326 
certified  copies  of  specifications,  etc.,  to  be,  326 

EXAMINERS, 

reports  of,  105 
duties  of,  95,  102,  103 

EXHIBITION,  PUBLIC, 

protection  to  unpatented  invention  exhibited  at,  65 

under  International  Convention,  320 
form  of  notice  to  comptroller,  402 

EXISTING  PATENTS.     See  LETTERS  PATENT 

not  affected  by  provisions  of  new  act  binding  Crown,  or  as  to  compul- 
sory licences,  175 
how  far  affected  by  25th  section  of  Act  of  1852,  176 

EXPERIMENTS 

abandoned,  do  not  avoid  subsequent  patent,  36,  46-49 
by  inventor,  not  publication,  62 

made  to  procure  evidence  for  trial  distrusted  by  Court,  287 
Court  may  direct,  to  be  made  for  its  guidance,  285 
may  authorise,  to  be  tried,  278 

L  L 


5U 

Exrtuunov.    S*  A»«xi»nurT  or  SrtcmcATio* 

ExTwatoK  or  Lrmtms  PATBVT,  191 

first  provided  for  by  6  *  6  William  IV.  e.  88,  191 

now  by  section  25  of  the  Act  of  1888.  191.  845 
is  nutter  of  favour,  not  of  right,  802 

and  may  be  granted  subject  to  conditions,  S06 
patentee  may  present  petition  to  Queen  in  Council  (or.  194,  844 

definition  of  •  patentee.'  88,  868 
assignee  is  not  in  as  favourable  position  as  inventor,  198 

but  his  baring  asristid  inventor  is  regarded.  192 
procedure  on  applying  for.  198.  408 

patentee's  intention  to  apply  to  be  advertised,  198 
petition  to  be  presented  six  months  before  expiration.  191 

or  at  any  time  before  expiration  where  patent  existed  before 

1884,  192. 

most  set  forth  all  material  facts,  193.  194 
parties  to,  198 
oaveat  against,  any  person  may  enter,  at  Council  Office,  194 

and  is  then  entitled  to  notice  from  petitioner  of  any  special 

application  and  of  hearing,  194 
and  may  be  heard  before  Judicial  Committee,  194 

as  to  right  of  alien  abroad  to  be  heard,  194 
caveat  most  be  entered  in  name  of  actual  opponent,  194 
within  fortnight  after  service  of  petition  opponent  most  lodge 

notice  of  grounds  of  objection,  194 
copies  of  specification  and  of  accounts  to  be  filed,  194 
formal  proofs  may  be  taken  by  clerk  of  Privy  Council,  196 
rules  regulating  proceedings,  408 
hearing  of  petition,  195 

assessor  may  be  called  in  by  Judicial  Committee,  195 
petitioner  and  opponents  may  appear  in  person,  195 
Attorney-General  appears  for  the  Crown,  195 

and  may  adduce  evidence  against  patent  irrespective  of  objec- 
tions, 194 

as  to  evidence  petitioner  should  produce,  195,  196 
merit  and  substantial  utility  to  be  shown,  196 

invention  not  brought  into  use.  presumption  against  utility, 
196 

but  this  may  be  explained  or  rebutted,  196 
as  to  evidence  opponents  may  produce,  197 
no  objection  that  others  have  improved  patentee's  invention  since 
his  patent,  197 

or  that  manner  of  working  has  been  varied,  197 
patent  assumed  to  be  valid,  unless  clearly  not  so,  198,  199 
accounts,  1%,  202 

must  be  full,  clear,  unreserved  and  properly  proved,  199 
what  profits  must  be  shown,  200,  201 
what  deductions  may  be  made,  201,  202 
deductions  claimed  should  appear  in  petition  or  accounts,  909 
wounds  for  granting,  or  for  refusing,  petition,  197-199,  201 

Judicial  Committee  to  have  regard  to  nature  and  merits  of  inven- 
tion in  relation  to  public,  192 
to  profits  made  by  patentee  as  such,  192 
and  to  all  the  circumstances  of  the  case,  192 
agreement  by  patentee  to  grant  exclusive  licence,  and  obtain 

extension,  contrary  to  policy  of  Act,  199 
grounds  of  decision  upon  the  merits,  202 

question  not  simply  what  patentee  has  received,  but  what  patent 

has,  or  ought  properly  to  have,  gained,  208 

amount  of  inventive  power  and  of  time  and  trouble  in  experiment' 
ing  to  be  considered,  203 


INDEX  515 

EXTENSION  OF  LETTERS  PATENT — continued 

smallness  of  improvement  may  be  no  measure  of  merit,  203,  204 
benefit  conferred  on  public  to  be  regarded,  203 
where  patent  is  for  invention  imported  from  abroad,  but  also  patented 

in  foreign  country,  205 
decides  nothing  as  to  validity  of  patent,  198 
grant  of,  to  be  considered  as  grant  of  new  patent,  198 
usually  effected  by  grant  of  new  patent,  206 
the  new  patent,  206 

is  dated  day  after  expiration  of  original  term,  206 
is  subject  to  all  provisions  of  the  Act  of  1883,  206 
will  be  invalid  if  original  patent  found  invalid,  198 
term  of,  204,  209 
may  be  for  fourteen  years,  192,  206 

but  to  justify  more  than  seven,  invention  must  have  excep- 
tional merit  and  public  usefulness,  204,  214,  215 
Crown  may  recall  warrant  for,  at  any  time  before  sealing,  205 
use  of  invention  after  expiration  of  original  term,  and  before  grant 
of,  not  infringement,  206 

and  parties  investing  capital  in  the  interval  in  working  it,  may 

oppose  or  claim  protection,  206 

restrictions,  conditions  and  provisions  may  be  inserted,  206 
may  be  granted  for  one  head  only  of  invention,  206 
may  provide  for  payment  by  assignee  to  patentee  of  annual  sum  or 

share  of  profits,  206,  213 

instances  of  other  conditions  and  provisions  in,  207 
when  once  granted,  committee's  jurisdiction  exhausted,  207 
office  copy  of  order  for,  must  be  left  at  Patent  Office,  208,  389 
costs  of  proceedings  for,  208 
selected  decisions  of  the  Privy  Council,  209-215 

EXTENT  OF  PATENT,  171 

does  not  include  Channel  Islands,  171 

FEES,  173,  391 

non-payment  of,  within  prescribed  time,  renders  patent  void,  172 

but  in  certain  cases  comptroller  to  enlarge  time,  173 
may  be  paid  in  certain  cases  on  day  following  due  date,  174 
rules  as  to  payment  of,  for  continuance  of  patent,  385,  389,  390 
list  of,  391 

FIJI, 

patent  laws  of,  478 

FINLAND, 

patent  laws  of,  435 

FOREIGN  APPLICATION  FOR  PATENTS,  381.     See  INTERNATIONAL  CONVENTION 

FOREIGN  PATENTS, 

laws  of  foreign  states,  421 

right  of  priority  of  foreign  applicant  under  International  Convention, 

87,  318 

international  arrangements  as  to,  318 
publication  of  complete  specification  in  England  may  bar  right  to,  101 

FOREIGN  VESSELS, 

use  of  invention  on  board  of,  in  British  waters,  265 

FORMS 

issued  by  the  Patent  Office,  377,  393 

L  L  2 


616  INDEX 

FBAJCCE. 

latent  law*  of,  486 

GERMANY, 

patent  law*  of,  440 

GUATEMALA, 

patent  laws  of.  443 

GUIANA  (BamsH), 

patent  laws  of,  472 

HAWAII, 

patent  laws  of,  444 

HKARINUS  BETOBE  COMPTROLLER, 
notice  of,  885 
form  of  application  for,  896 

HOLLAND, 

patent  laws  of,  444 


patent  laws  of,  445 

HONDURAS  (BRITISH), 
patent  laws  of,  472 

HONG  Koso, 

patent  laws  of,  479 

ILLUSTRATED  JOURNAL  or  PATENTED  INVENTIONS, 

IMPORTER  or  INVENTION.     See  INVENTION,  COMMUNICATION  FROM  ABROAD 
entitled  to  a  patent,  86 
may  obtain  extension,  192,  205 

IMPROVEMENTS, 

whether  result  of  sufficient  invention  to  support  patent,  68 

on  existing  patents,  21,  85,  246 

quantum  of,  not  material,  28 

where  patent  is  for,  in  complicated    machine,  specification  should 

distinctly  point  it  out,  184 
in  known  process,  applied  to  same  process  as  subsequently  altered  will 

be  protected,  288 
in  old  machine  and  no  novelty  in  result,  patentee  held  strictly  to  his 

description,  248 

INCORPORATED  COMPANY.     See  CORPORATE  BODY 


alphabetical  and  subject-matter  of  specifications,  828 
of  patents,  chronological  and  reference,  828 

INDIA, 

patent  laws  of,  479 

INDUSTRIAL  OR  INTERNATIONAL  EXHIBITIONS, 
protection  of  inventions  at,  65,  820 

\NT 

may  be  grantee  of  patent,  88 

INFRINGEMENT,  233.     See  ACTION  ros  INFRINGEMENT 
modes  of,  283 
substantive  law  of.  234-271 


INDEX  517 

INFRINGEMENT — continued 

substituting  chemical   or   mechanical    equivalent    for    some   part   of 

patented  invention  is,  234,  245 

where  equivalent  is  known  to  be  such  at  date  of  patent,  258,  260 
colourable  alteration  is,  234 

immaterial  alterations  in  order  to  evade  a  patent,  237 
substantial  similarity  is,  237,  240 
when  principle  is  new,  238 
where  patent  is  for  new  result  and  process  for  arriving  at  it  is  described, 

different  process  for  same  result  is,  240 

where  principle  is  not  new  different  method  of  applying  it  is  not,  242 
in  cases  of  interfering  patents,  245 
patenting  improvement  on  existing  patent  is  not,  246 

but  using  it  is,  246 
using  substantial  part  of  existing  patented  invention  in  carrying  out 

new  invention  is,  246 

of  part  of  process  actionable  if  that    part   might   itself   be  subject- 
matter,  250,  253 

on  question  of,  essential  nature  of  invention  will  be  regarded,  253 
manufacture  and  export  of  parts  of  patented  combination,  253 
of  any  one  head  of  an  invention  actionable,  253 
of  patents  for  combinations,  247-254.     See  COMBINATIONS 
if  substance  of  combination  is  borrowed  there  will  be,  252 
of  patents  for  chemical  processes  and  products,  254-260 
by  dealing  in  articles  made  by  infringing  patent,  261 
by  user,  263 

user  of  patented  article  made  abroad  is,  263 
as  to  liability  even  when  user  is  passive,  263 

where  committed  through  agent,  both  employer  and  agent  liable,  265 
by  the  Crown,  266 

user  by  foreign  vessels  in  British  waters,  265 
construction  as  an  amusement  or  model  not,  267 
cases  of  non-infringement,  267-269 
use  of  new  and  material  part  of  an  arrangement  for  a  purpose  different 

from  that  in  patented  combination  not,  268 
use  of  natural  substance  in  place  of  artificial  substance  of  same  chemical 

constitution  not,  268 

acts  done  on  British  vessel  at  Malta  or  on  high  seas  not,  269 
sale  of  chemicals  to  be  used  in  infringing  a  patent  is  not,  269 

neither  is  indemnity  to  buyer  against  proceedings,  269 
use  of  invention  after  expiration  of  patent  and  before  extension  granted 

is  not,  206 

intention  of  infringer  not  material,  269-271 
practice  in  cases  of,  272-302.     See  ACTION  FOB  INFRINGEMENT 
question  of,  one  of  mixed  law  and  fact,  291 
may  be  tried  by  itself,  277 

INJUNCTION, 

plaintiff  is  entitled  to  protection  of,  272 

granted  to  restrain  sale  after  patent  expired,  of  articles  made  before 

276 
licensee  may  not  apply  in  name  of  owner  for,  225 

neither  may  agent  of  patentee,  225 
bill  for,  dismissed  where  infringement  innocent,  accidental  and  trivial, 

and  no  substantial  damage,  270 
interlocutory,  272 
rules  as  to,  273 

granted  in  proper  cases  before  trial  of  action,  273 
granted  if  patent  established  in  other  actions,  even  though  fresh 
facts  against  patent  brought  forward,  274 


518  INDEX 


if  not  granted,  defendant  usually  order*!  to  keep  an  account.  J75 
if  granted,  plaintiff  most  give  undertaking  as  to  damage*.  276 
granted  where  defendant  intends  and  claim*  right  to  infringe,  97« 
mew  general  offer  held  no  eridenoe  of  intention  under  the 

•    I!  '    ']!!!•'    I1!.    •        .     L'-T 

to  restrain  threats,  808.    See  ACTION  TO  RBSTBAXX  THREAT* 

plaintiff   entitled    to  perpetual,  when   validity  of    patent    has  been 

established  and  infringement  proved,  994 
if  defendant  submits  may  be  obtained  without  trial,  994 
cannot  be  enforced  against  infringer,  if  patentee  afterwards  enters 


cases  on,  979-976 

LvsMcnox  n»  PAT«XT  Acnoxs.  977 
ordered  by  the  Court,  978 
includes  analysis,  977 
licensee  not  a  party  not  compelled  to  give,  in  action  against  bin  licensor, 

279 
of  documents,  288 

communications  between  inventor  and  his  patent  agent  not  privi- 
!,,,.!.  HI 

INSTITUTE  or  PATENT  AOEXTS,  330.     See  PATENT  AOENT 

rios 
of  infringer  immaterial,  909 

INTERNATIONAL  ABBANOKXENTS,  318,  359.     Set  INTERNATIONAL  CONVENTION 


I'oNVKXTiox,  319,  373.     See  FOREIOX  PATI 
parties  to. 

rights  of  subjects  of  state  in  union  under,  317,  373 
protection  to  inventions  at  exhibitions,  320 
international  office,  320-322 
monthly  periodical,  322 

rules  as  to  applications  for  patents  under,  321,  381 
patents  under,  only  granted  in  England  to  person  making  foreign 

application 

rights  of  priority  of  foreign  applicant,  318,  373 
Act  applies  although  foreign  state  has  only  acceded  after  date  of  foreign 

application,  322 

INTERPRETATION  or  SPECIFICATIONS,  152.     Set  CONSTRUCTION 

IxvmsnoN.     See  also  INVENTOR 

not  every  kind  patentable,  3,  5,  14 
what  is  patentable,  5.     See  SUBJECT-MATTER 
classes  of  patentable  inventions,  14-20 
amount  of,  required  to  support  patent,  67 

very  small  may  be  sufficient,  70 

canes  where  invention  insufficient,  72-76 
by  two  persons,  patent  must  be  taken  out  in  both  names,  30 
must  be  useful,  21.     See  UTILITY 
must  be  new,  27.     See  NOVELTY 
if  several  heads  included  in  one  patent,  one  useless  or  old  invalidates 

the  whole  patent,  21,  27 

importer  of,  to  this  country  from  abroad  can  apply  for  patent,  86 
should  be  disclosed  in  general  terms  in  title,  89 
question  of  what  is  the.  claimed  by  specification,  is  for  Court,  288 


INDEX  519 

INVENTION — contimied 

one  invention,  patent  to  be  for,  96 

alternative  devices  to  effect  same  object  are,  97 
if  Crown  misled  as  to  extent  of,  patent  void,  27 
relating  to  munitions  of  war,  175 
definition  of,  as  used  in  Patents  Acts,  353 
science  and  art  department  may  require  model  of,  for  Patent  Museum, 

on  payment,  329 
cases  on,  67 

INVENTOR, 

true  and  first  inventor,  29,  30 
a  patentee  must  be,  4 

first  importer  of  new  foreign  invention  is,  29«.,  86.     See  COM- 
MUNICATION FROM  ABROAD 

he  who  first  produces  in  commercial  quantities  substances  only  pre- 
viously produced  in  small  quantities,  is,  20 
where  joint  inventors,  all  should  apply  for  patent,  30 

and  may  each  work  invention  independently  of  the  other,  176 
notwithstanding  assistance  of  workmen,  employer  may  be  sole,  30-32 

but  he  must  be  more  than  mere  employer,  33 
as  to  verbal  information  received  from  another  person,  33 
publication  of  patented  invention  by,  before  date  of  grant,  58.     See 

PUBLICATION 

does  not  lose  his  right  to  patent  by  keeping  invention  to  himself  pro- 
vided he  makes  no  profitable  use  of  it,  58,  62.     See  USER 
two  independent — first  patentee  held  to  be  true  and  first,  30 
patentee    may  be,  though  another  had    previously  made,   but    not 

published,  same  experiments,  36 

legal   representative   of,   may  obtain   patent   if  inventor   dies   before 
applying,  88 

or  after  applying  but  before  patent  sealed,  88 
must  apply  within  six  months,  96 

where  rival  inventors,  patent  may  be  vested  in  trustees,  164 
patent  to  true,  not  invalidated  by  application  in  fraud  of  him,  175 
communications  between,  and  his  patent  agent  not  privileged,  283 
cases  as  to,  29-33 

IRELAND,  296,  312,  327,  361 
patent  extends  to,  172 

ISLE  OF  MAN,  296,  316,  317,  327 
patent  extends  to,  172 

ISSUES 

of  fact  may  be  granted  in  actions,  276 

and  tried  before  a  referee,  285 

whose  report  is  equivalent  to  the  finding  of  a  jury,  280 
not  granted  as  a  matter  of  course,  277 
what  are  usual,  276 

ITALY, 

patent  laws  of,  445 

JAMAICA, 

patent  laws  of,  482 

JAPAN, 

patent  laws  of,  448 

JOINT  INVENTION.     See  INVENTOR 

JOINT  PATENTEES,  176.    See  PATENTEES,  PARTNERSHIP 
each  may  use  invention,  176 


INDEX 

Jontr  PATBXTua— contmtttd 

one  granting  Uoanoat  must  aoooont  to  other  for  royalties.  888 

inventor  and  non -inventor  may  be,  86 

one  of,  cannot  assign  more  than  his  share.  217.  218 

JUDICIAL  COMMITTEE.     Stt  Ernuraox,  etc. 
rn  W,  408 

JCRT 

question    whether   specification    describes    material    with    nafflcient 
accuracy  is  for.  1 '-'  1 

so  also  in  its  identity  with  old  prior  apeeifleatioi 
question  of  utility  in  for  them  to  decide,  22 

but  they  have  not  to  consider  it*  extent,  S3 
trial  by.  cannot  be  in  Chancery  Division.  272 
trial  to  be  without,  unless  Court  otherwise  direct*.  884,  311 
functions  of,  on  action  for  infringement,  889 

LAW  Omens, 

rale*  regulating  proceedings  on  appeals  to,  406 

appeals  to,  from  comptroller,  95,  103,  160,  180 

no  appeal  from  decision  of,  161,  180 

no  prohibition  lies  to,  180 

may  make  rules,  S49 

may  examine  witnesses  on  oath,  180 

may  order  costs  in  any  proceeding  before  him,  349.  407 

definition  of,  368 

LEEWARD  ISLANDS, 

patent  laws  of,  483 

LEGAL  PaocnDnoa.     See  also  ACTIONS.  REVOCATION 

for  infringement,  not  to  be  taken  until  patent  granted,  105 
not  to  be  taken  for  infringement  committed  before  publication  of  com- 
plete specification, 
plaintiff  need  not  apply  to  defendant  before  commencing.  I 

nor  rely  on  promise  not  to  infringe  again . 

for  infringement,  particulars  of  breaches  and  of  objections  must  be 
delivered  in,  279,  280 

which  may  be  amended,  279,  280 
amendment  of  specification  may  be  made  during  progress  of,  184,  and 

aw  Annan 

reports  of,  to  be  published  by  comptroller,  324 
action  to  restrain  threats  of,  SOS 

LETTERS  PATENT, 

are  taken  out  at  risk  of  inventor,  5,  172 
requisites  to  being  held  valid  in  court  of  law, 

that  invention  possess  utility,  4,  '21.     See  UTILITY 
display  novelty,  4,  27.     See  XOVELTT 
show  some  measure  of  ingenuity,  4,  67.     See  INTENTION 
that  patentee  be  true  and  first  inventor,  4,  29,  86.     Set  INVENTOR. 
unless  communicated  from  abroad,  4,  86.      See  Cow 

TION,  etc. 
that  Specification  be  sufficient,  4,  94,  100.     See  SPECIFICATION. 

COMPLETE,  PROVISIONAL. 

for  what  inventions  obtainable,  5.     See  SCBJECT-MATTER 
by  whom  obtainable,  86.     Ste  APPLICANT 
how  obtained,  89.     See  APPLICATION  FOR  PATENT 
title  of,  90.     See  TITLE  or  PATENT 
opposition  to  grant  of.  159.     See  OPPOSITION  TO,  etc. 
amendment  of,  178.     Sec  AMENDJH 


INDEX  521 

LETTERS  PATENT — continued 

assignment  of,  216.     See  ASSIGNMENTS 

licences  under,  219.     See  LICENCES 

registration  of,  228.     See  REGISTRATION 

infringements  of,  233.     See  INFRINGEMENTS,  ACTION  FOR  INFRINGEMENTS 

revocation  of,  309.     See  REVOCATION 

sealing  of,  170,  171 

extend  throughout  United  Kingdom  and  Isle  of  Man,  171 

but  not  the  Channel  Islands,  171 
duration  of,  limited  to  fourteen  years  from  date,  171 
dated  and  sealed  as  of  day  of  application,  171 
extension  of,  191.     See  EXTENSION 
form  of,  172,  364 

Board  of  Trade  has  power  to  alter,  172 
become  void  if  patentee  does  not  pay  fees,  172,  173 

or  if  service  of  the  Crown  not  supplied  with  invention  if  required,  172 

and  only  special  Act  of  Parliament  can  restore  validity,  174 
fees  on,  payment  of,  173,  391.     See  FEES 
clerical  errors  in,  may  be  amended,  174 
if  lost  or  destroyed  duplicate  may  be  sealed,  174 

form  of  application  for  duplicates,  402 
rights  of  the  Crown  as  to,  174.     See  CROWN 
for  munitions  of  war,  may  be  acquired  by  Secretary  of  State,  175 
granted  or  applied  for  before  1884,  not  subject  to  compulsory  licences,  175 

provisions  respecting,  175,  353 

granted  before  1884,  effect  on,  of  lapse  of  foreign  patent  for  same  inven- 
tion, 175,  176 

obstructive,  not  permitted,  21 

may  be  had  for  improvements  on  previous  patent,  85 
may  be  refused  for  invention  contrary  to  law  or  morality,  171 
to  be  for  one  invention  only,  172 

but  no  objection  can  be  taken  in  a  proceeding  on  ground  that  it 

comprises  more  than  one,  172 

not  invalidated  by  application  in  fraud  of  inventor,  175 
rival  applications  for,  164-167 
partnership  in,  219.     See  PARTNERSHIP 

joint  grantees  of,  may  each  use  invention  independently  of  the  other,  176 
where  vested  in  trustees  for  two  or  more  as  tenants  in  common,  177 
one  co-owner  of,  may  sue  alone  for  recovery  of  profits,  218 
interest  of  intestate  patentee  under, passes  to  personal  representative,  177 
of  bankrupt  vest  in  trustee,  177,  218 

who  may  sue  for  previous  infringements,  218 
foreign  laws  of,  421 
colonial  laws  of,  470 

indexes  and  abridgments  of,  published,  324,  328 
illustrated  journal  of,  published,  324 
reports  of  cases  on,  published,  324 

LIBERIA, 

patent  laws  of,  449 

LIBRARY,  PUBLIC,  AT  PATENT  OFFICE,  328 

LICENCES,  216,  219-227.     See  also  LICENSEE 
should  be  registered,  216 
rules  as  to  registration  of,  216,  389 

Board  of  Trade  may  order  patentee  to  grant,  225.     See  below. 
exception  as  to  patents  granted  before  commencement  of  Act,  226 
various  forms  of,  219 
exclusive  licence,  what,  220 

registration  of,  for  a  district  is  not  notice  to  the  world,  232 


1M.FX 


oaual  consideration  for,  990 

may  unintentionally  create  partnenhip,  910 

proper  oovenanU  in.  990 

effect  of  recitals  by  way  of  estoppel,  990 

where  terms  of,  broken,  licensor  may  determine.  291 

not  assignable  to  third  person  in  the  absence  of  express  or  implied 


money  paid  for,  recoverable  where  consideration  fails,  999 

bat  annual  payments  not  recoverable  if  patent  void,  998 
during  continuance  of,  licensee  may  not  dispute  validity  of  pau 

but  may  have  limits  of  patentee's  rights  ascertained,  998 
to  be  in  writing  and  under  seal,  925 
stamp  on,  925 

patentee  not  allowed  to  publish  advertisements  calculated  to  deter  public 
from  dealing  with  his  licensee,  925 
as  to,  990-995 


LICESCKH,  CoMPCLHORY,  295,  890 

order  of  Board  of  Trade  for,  absolute  and  final,  996 

petition  for,  and  procedure,  etc.,  387 

form  of  application  for,  399 

form  of  petition  for,  399 

form  of  opposition  to,  400 

provisions  to  apply  only  to  patents  under  Act  of  1888,  996 

LICENSEE.     See  alto  LICENCES 

during  the  licence  may  not  dispute  validity  of  patent,  228 
even  where  no  formal  licence,  if  royalty  paid,  928 
but  may  after  licence  determined,  224 
must  pay  royalties,  although  patent  found  invalid  in  suit  against  other 

parties,  223 

has  a  right  to  have  the  patentee's  invention  denned,  228 
exclusive,  for  certain  district  cannot  restrain  use,  by  persons  without 

notice,  of  articles  bought  outside  district,  224 

exclusive,  may  not  bring  infringement  action  without  joining  patentee,  224 
may  not  apply  in  name  of  owner  for  injunction  to  restrain  infringe- 

ments, 225 
assignee  of  share  of  profits  may  call  on,  for  account,  218 

LOST  PATENT, 

replacement  of,  174,  349-402 

LUXEMBOURG, 

patent  laws  of,  449 

MALTA, 

patent  laws  of,  483 


interpretation  of  the  legal  term.  I- 

MAURITIUS. 

patent  laws  of,  484 

MEXICO, 

patent  laws  of,  450 

MISTAKES.     See  CLERICAL  ERRORS 

MODELS, 

power  of  science  and  art  department  to  require,  829 
order  for  production  of,  before  trial  of  action,  refused,  283 
not  in  evidence,  may  be  used  to  explain  argument,  286 


INDEX  523 

MONOPOLIES, 

power  of  Crown  to  grant,  1,  2 
statute  of  James  I.  against,  2,  335 

MUNITIONS  OF  WAR, 
patents  for,  175 

MUSEUM,  PATENT,  329 

NATAL, 

patent  laws  of,  485 

NEWFOUNDLAND, 

patent  laws  of,  48G 

NEW  SOUTH  WALES, 
patent  laws  of,  480 

NEW  ZEALAND, 

patent  laws  of,  487 

NICAEAGUA, 

patent  laws  of,  452 

NORWAY, 

patent  laws  of,  452 

NOTICES, 

may  be  sent  by  post,  356,  379 

NOVELTY.     See  INVENTOR.     PUBLICATION.     USEK 
necessary  element  of  patentable  invention,  27 
if  any  part  claimed  as  invention  not  novel,  patent  void,  27 
head  of,  includes  questions  whether  patentee  true  and  first  inventor,  28 
29-33.     See  INVENTOB 

whether  invention  new  to  public  at  date  of  patent,  28.     See  PUBLI- 
CATION.    USER 

defeated  by  prior  public  user,  34,  63.     See  USER 
by  secret  user  by  inventor  for  profit,  45 
by  publication  in  printed  books,  51.     See  PUBLICATION 
in  prior  specifications,  54 
by  inventor,  58 
by  other  persons,  63 

not  defeated  by  application  in  fraud  of  inventor,  45 
by  abandoned  experiments  of  others,  36,  46 
by  prior  imperfect  machines,  49 
by  earlier  inventions  having  similar  object,  49 
by  confidential  communications,  60 
by  experiments  by  inventor,  62 
by  authorised  use,  &c.,  at  exhibitions,  65 
of  combination  will  support  a  patent,  15.     See  COMBINATIONS 
onus  of  proving  want  of,  is  on  defendant,  287 

OBJECTION 

that  patent  comprises  more  than  one  invention  cannot  be  taken,  172 
particulars  of,  in  patent  action,  280.     See  PARTICULARS 
to  grant  of  patent,  159.     See  OPPOSITION  TO,  etc. 

OFFENCES  AND  PENALTIES,  314.    See  PENALTIES 
OFFICIAL  DOCUMENTARY  EVIDENCE,  326 
OFFICIAL  REFEREE,  285 


to  amendment  of  specification.  180.    SM  Amnrmaorf 

to  compulsory  grant  of  licence,  888,  400 

to  extension  of  patent,  194.     Stt  Kmcxaov 

to  grant  of  patent,  169.    SM  OrmsanoM  TO  GBAXT 

Orroamo*  TO  GRAXT  or  PATKXT,  159 
procedure  on 

notice  of,  to  be  given  within  two  months  of  date  of  advertiacnMBt 
of  aooeptanoe  of  specification,  169 

and  to  state  grounds  of  opposition,  169 
form  of,  897 

comptroller  to  give  notice  of,  to  applicant.  169 
t<>  hear  applicant  and  opponent  if  desired,  169 

may  allow  amendment  in  notice  of  opposition,  1GO 

roles  regulating  proceedings  before,  886 
evidence  to  be  by  statutory  declarations,  160 

onus  of  proof  lies  on  opponent.  160 

at  hearing  of,  parties  may  appear  in  person  or  otherwise,  160 
notice  of  appeal  to  law  officer  to  be  filed,  160 
law  officer  to  hear  parties  if  required,  340 

may  obtain  assistance  of  expert,  840 

no  appeal  from  decision  of,  161 

rules  regulating  proceedings  before,  406 
costs  of,  can  only  be  had  before  law  officer,  109 
grounds  of,  three  only,  159 

(1)  that  applicant  obtained   invention   from   opponent,   or  from 

person  of  whom  he  is  legal  representative,  162 

(2)  that  invention  patented  in  this  country  on  application  of  prior 

date,  162 

that  complete  specification  describes  or  claims  invention  other 
than  that  in  provisional,  and  that  such  other  invention  is 
subject  of  application  by  opponent  in  the  interval,  159 
As  to  first  ground  of  opposition, 
assistance  of  workmen,  162 
meaning  of  '  legal  representative,'  162 
As  to  second  ground  of  opposition. 

opponent  must  have  interest,  162,  163 

may  be  founded  on  expired  prior  patent,  163 

but  invention  is  not  patented  if  only  described,  and 

not  claimed,  in  prior  patent,  163 
invention  only  provisionally  protected,  no  ground,  163 
person,  whose  complete  specification  accepted,  may 

oppose.  163 

disclaiming  clauses  may  be  required,  163,  164 
rival  applications,  164 
joint  inventors,  164 

one  applicant  inventor  of  part,  and  other  of  other  part,  165 
mala  fides,  167 
in  cases  of  doubt,  patent  granted,  161 

ORAXOK  FREE  STATE, 
patent  laws  of,  453 

PARAGUAY, 

patent  laws  of,  454 

PARTICULARS  OF  BREACHES  AXD  or  OBJECTIONS, 

defendant,  in  action  for  threats,  may  be  entitled  to,  304 
required  in  action  for  infringement,  279,  280 


INDEX  525 

PARTICULARS  OF  BREACHES  AND  OF  OBJECTIONS — contimied 
may  be  amended,  279,  280,  282 
insufficient,  better  may  be  required,  279,  282 
costs  of,  297 

certificate  by  Court  or  judge  as  to,  297 
cases  as  to,  279-282 
except  by  leave  of  Court,  evidence  not  admitted  outside  of,  287 

PARTNERSHIP.     See  ASSIGNEE,  ASSIGNMENT,  JOINT  PATENTEES 
co-owner  of  patent  may  sue  alone  for  recovery  of  profits,  218 
licence  may  unintentionally  create,  220 

at  will  for  working  invention,  patent  becomes  partnership  assets,  218 
and  each  partner  acquires  right  to  work,  219 
which  not  taken  away  by  registered  owner  assigning  to  third  party 

with  notice  of  partnership,  219 
cases,  225 

PATENT.     See  LETTERS  PATENT 

penalty  for  describing  goods  as  patented  when  no  patent  has   been 

granted  for  same,  314 
filing  of  provisional  specification  does  not  justify  use  of  word  on  label, 

316 

use  of  word  on  label  when  patent  expired,  314 
how  affected  by  Merchandise  Marks  Act,  1887,  315 

PATENTABLE  INVENTION.     See  INVENTION,  SUBJECT-MATTER 

PATENT  ACT,  1852 

effect  of  repeal  of,  175,  176 

assignment  of  patents  obtained  under,  217 

PATENT  AGENT.     See  AGENTS 

communications  between  inventor  and,  not  privileged,  283 

person  describing  himself  as,  when  not  on  register,  liable  to  penalty, 

316 
Institute  of,  330 

to  keep  register  of,  331 
who  may  be  registered  as,  331 
rules,  411 

PATENT  OFFICE,  323 

is  open  to  the  public,  323 

comptroller-general,  powers  and  duties,  323.     See  COMPTROLLER 

general  rules,  325.     See  KULES 

the  Patent  Office  seal,  326 

official  documentary  evidence  of,  326 

registers,  327.     See  EEGISTRATION 

publications  and  indexes  of,  327 

public  library  of,  328 

PATENT  MUSEUM,  329 

PATENTS,  ETC.  ACTS,  1883  to  1888.     See  STATUTES 
commencement  of  Act  of  1883,  337 

PATENTS  BULES,  1890,  377 

PATENTEE.     See  INVENTOR,  JOINT  PATENTEES 
who  may  be,  86.     See  APPLICANT 
definition  of  word,  as  used  in  the  Act,  88 
may  assign  and  license,  216 
if  joint,  cannot  assign  more  than  his  share,  217 


526  isi'K.x 


on  assigning  patent,  may  contract  to  assign  tutors  patent*  rakting  or 
iMErftoil  El 

cannot  alle«e  want  of  novelty  in  action  for  infringMMBft  after  ioripiing 
for  valuable  consideration,  819 

unless  patent  made  invalid  by  assignee1!  disclaimer.  319 
and  otherwise  whm  patent  assigned  by  trustee  under  hi*  bank 

ruptcy,  219 
may  be  required  to  famish  model  of  invention  to  Patent  MuMOm  on 

payment,  899 

on  death  of,  patent  vests  in  personal  representative.  177 
who  mast  register  his  title,  M9 

PAYMENTS.     See  Pus 

PENALTIES,  814 

for  sale  of  article  as  patented  when  not  patented,  814 

under  Merchandise  Marks  Act,  1887,  816 

for  use  of  royal  arms  without  special  authority,  816 

may  be  sued  for  in  Sheriff's  Court  in  Scotland,  816 

in  Isle  of  Man,  816,  317 

for  falsification  of  register,  817 

for  person  describing  himself  as  patent  agent  when  not  on  register,  816 

PERU, 

patent  laws  of,  454 

PKTmox  FOR  REVOCATION,  309.     See  REVOCATION 

PHILIPPINE  ISLANDS, 

patent  laws  of.    See  SPAIN 

PORTO  Rico, 

patent  laws  of.     See  SPAIN 

PORTUGAL, 

patent  laws  of,  455 

POST, 

applications,  notices,  etc.,  may  be  sent  by,  856,  879 

PRINCIPLES, 

bare  principles  not  patentable,  6-11 
unless  embodied  in  concrete  form,  6 

but  inventor  having  discovered  one  mode  of  carrying  a  new  principle 
into  effect,  is  protected  against  all  other  modes  of  carrying  the 
same  principle  into  effect,  388 
when  the  principle  is  not  new,  a  patent  should  be  confined  to  the  par- 

ticular mode  of  carrying  it  into  effect,  242 
eases  on,  6-11 

PRIOR  PUBLICATION.    See  PUBLICATION 
PRIOR  USER.    See  Usn 

PRTTY  COUNCIL.    See  EXTENSION 

orders  of.  to  be  entered  in  Register  of  Patents,  207-8 
rules  of  Judicial  Committee  of,  408 


are  patentable,  11-13 

on.  11-13,  254-260 


INDEX  527 

PROPRIETOES, 

register  of,  228.     See  EEQISTKATION 

PROTECTION, 

provisional,  99 

gives  applicant  no  rights  against  public,  99 

does  not  justify  use  of  word  '  patent,'  316 
by  complete  specification,  104-5 

PROVISIONAL  PROTECTION.     See  PROTECTION 

PROVISIONAL  SPECIFICATION.     See  SPECIFICATION,  PROVISIONAL 

PUBLICATION  OF  INVENTION.     See  USER,  NOVELTY 
in  printed  book,  51 

will  vitiate  patent,  though  patentee  did  not  derive  his  knowledge 

from  book,  53 
foreign  book  in  British  Museum  or  public  library,  52 

circulated  in  England,  52 
question  of  evidence  whether  the  description  has  become  part  of 

public  knowledge,  53 
published  drawing  may  avoid  patent,  53 
in  prior  specification,  54 

specification    under    worthless    patent    may    avoid    subsequent 

patent,  55 
meaning  of  terms  of  art  in,  to  be  ascertained  with  reference  to 

date  of,  57 

what  antecedent  description  will  avoid  patent,  55-58 
by  inventor,  58 
sale,  59 

manufacture  and  offer  for  sale,  59 
of  results  aimed  at  no  publication  of  invention  to  obtain  such  results, 

60 

experiments  by  patentee,  62 

confidential  communications,  60,  65.     See  WORKMEN,  NOVELTY 
prior  use  by  inventor  not  necessarily,  58 

by  others,  63.     See  USER 
deposit  of  machine  in  public  room  for  testing  its  qualities,  58 

public  user  for  testing,  63 
by  publication  of  material  made  abroad,  40,  44 
by  earlier  inventions  having  similar  object,  49 
effect  of  International  Convention  on,  54 
prior  use  of  invention  in  colony  is  not,  44 
extent  to  which  experiments  may  be  made  without,  36,  46-49,  62 

PUBLIC  USER.     See  USER 

PURCHASE  OF  PATENT.     See  ASSIGNMENT 

QUEENSLAND, 

patent  laws  of,  491 

REFEREE, 

issues  of  fact  in  patent  cases  may  be  tried  by,  285 

Court  may  appoint,  to  ascertain  facts  or  make  experiments,  285 

REGISTER  OF  PATENTS.     See  REGISTRATION 

REGISTRATION,  228 

of  patent  agents,  331.     See  PATENT  AGENT 

before  1884  two  registers,  of  patents  and  of  proprietors,  were  kept,  327 
now  deemed  parts  of  register  kept  under  Act  of  1883,  230 


SSI 


—  continued 
register  to  be  kept,  898 

what  particular*  to  be  entered  in,  888 

U  primd-facit  evidence,  888 

notice  of  trust  not  to  be  entered  in.  889 

probate,  and  letters  of  administration,  must  be  entered  in,  889 

jurisdiction  of  Court  as  to  entries  in,  889,  881 

is  subject  to  appeal,  880 
jurisdiction  of  Master  of  the  Bolls,  881,  888 
rectification  of,  on  application  of  person  aggrieved,  889 
correction  of  clerical  error  in.  880 
falsification  of  entries  in,  a  misdemeanor,  880,  817 
open  to  inspection  of  the  public,  880,  887 
certified  copies  of  entries  in,  may  be  had,  880,  886 
Forms, 

of  request  to  enter  name  in,  401 
for  notification  of  licence  in,  408 
for  alteration  of  address  in,  408 
for  entry  of  Order  of  Privy  Council  in,  403 
procedure  as  to,  229 
rules  as  to,  888 
fee  payable  on,  889 
refused  until  patent  sealed,  329 
deeds  left  for,  must  be  duly  stamped,  889 

of  assignments,  necessary  to  enable  assignee  to  maintain  infringement 
action,  230 

relates  back  to  date  of  assignment,  231 
of  two  or  more  conflicting  assignments,  •_'•"•  1 
of  exclusive  licence  for  a  district  is  not  notice  to  the  world,  888 
cases  on,  389-832 

RENEWAL, 

certificate  of,  353,  400 

REPEAL  or  FORMER  ACTS,  862 

REVOCATION  or  PATENTS,  309 

proceedings  by  scire  facias  abolished,  809 

but  every  ground  for  repealing  by,  still  a  ground  for,  309 
obtained  on  petition,  309 
grounds  for,  309,  311 

by  whom  petition  for,  may  be  presented,  310 
all  persons  beneficially  interested  in  patent  to  be  respondents  to  petition 

for,  310 

service  of  petition  for,  out  of  the  jurisdiction,  312 
proceedings  at  trial  for,  similar  to  those  in  action  where  validity  of 

patent  in  dispute,  311 
plaintiff  to  deliver  particulars  of  objection,  which  may  from  time  to 

time  be  amended,  310 
in  proceeding  for,  Court  may  call  in  the  aid  of  an  assessor,  285,  311 

may  allow  patentee  to  apply  to  amend  specification,  311 
order  for,  must  be  registered,  312 
Scotch  proceedings  for,  312 
in  Ireland,  312 
when  patent  revoked  on  ground  of  fraud,  new  patent  may  be  granted  to 

true  inventor,  312 
costs,  313 

RIVAL  APPLICATIONS  FOB  PATENT,  164-167 

ROYAL  ARMS, 

penalty  on  unauthorised  assumption  of,  316 


INDEX  529 

RULES, 

Board  of  Trade  may  make,  325,  331,  357 

which  are  of  same  effect  as  if  contained  in  the  Act,  325,  358 

but  either  House  of  Parliament  may  annul  within  limited  time,  32G 

patents  rules,  1890,  377 

patent  agents  rules,  411.     See  PATENT  AGENT 

international  and  colonial  arrangements,  321,  373.     See  INTERNATIONAL 
CONVENTION 

law  officers  may  make,  349 

of  law  officers,  406 

of  judicial  committee,  408 

RUSSIA, 

patent  laws  of,  456 

ST.  HELENA, 

patent  laws  of,  493 

SALE  OF  PATENT.     See  ASSIGNMENT 

SAN  SALVADOR, 

patent  laws  of,  458 

SCIENTIFIC  INVESTIGATION, 

in  cases  requiring,  issues  of  fact  may  be  sent  for  trial  before  a  referee, 
285 

SCIRE  FACIAS, 

action  of,  abolished,  309 

SCOTLAND, 

patent  extends  to,  172 

as  to  action  for  infringement  in,  295 

transmission  of  specifications  to,  326 

legal  proceedings  in,  295,  312,  316,  327 

revocation  of  patent  in,  to  be  by  action  of  reduction,  312 

although   patentee   in,   petition   for  revocation   can   be  presented   in 

England,  312 
order  of  Courts  as  to  rectification  of  registers,  361 

SEAL  OF  PATENT  OFFICE,  170,  326 

patent  to  be  sealed  within  fifteen  months  from  application,  170 
except  when  delayed  by  appeal  or  by  opposition,  170 
or  death  of  applicant  within  that  period,  170 

in  which  case  twelve  months  from  his  death  allowed,  170 
but  time  extended  by  four  months  where  time  for  leaving  and 
accepting  specification  has  been  enlarged,  170 

to  be  dated  and  sealed  as  of  day  of  application,  171 
more  than  one  patent  for  same  invention  may  be  sealed,  171 
sealing  of  official  documentary  evidence  with,  326 

SECOND  PATENTS,  22,  85 

SECRET  PROCESS, 

course  when  infringement  alleged  to  be,  286 

user  of,  may  render  subsequent  patent  invalid,  34,  45 

SIZE 

of  documents,  378 

SOOTH  AUSTRALIA, 

patent  laws  of,  -lii.'f 

SPAIN, 

patent  laws  of,  459 

M  M 


IM  of.  |  tililished,  884,  818 
a»n  >>••  «  m  to  Edinburgh  Mu warn  of  Science  nri.i 

tied  copies  of,  or  extract*  from,  may  be  hit 
Hii'l  will  be  evidence  in  the  renpective  Court*,  3517 
printed  copies  of  may  be  purchased,  897 
not  to  be  published  onleM  application  accepted,  105 

COMPLETE,  100 
procedure  as  to, 

to  be  left  with  application.  101.     S,-f  Arn.ii  ATIOX  FOB  P* 
or  within  nine  months  after  its  dat« 
unless  comptroller « 

in  of  appli  104 

if  not  left  within  due  time,  application  deemed  abandoned 
if  applicant  diet*  before  leaving,  effect  uncertain 
will  U-  referred  to  examiner,  102,  103 

on  whose  report  comptroller  ma;  require  amendment,  10.' 

subject  to  appeal  to  law  olliccr,  103 
his  report  not  to  be  open  to  public  inspection.  105 
unless  accepted  within  twelve  months  of  application  (save  in  case 
of  appeal),  application  to  become  void,  104 
but  comptroller  may  extend  time,  104 

form  of  application  for,  405 

acceptance  of  to  be  advertised  and  notice  given  to  applicant. 
IM 

and  application  and  specifications  then  to  be  open  to  public,  104 
and  applicant  then  to  have  certain  rights,  104 
form  of,  397 

must  commence  with  title,  102.     See  TITLE 
must  end  with  statement  of  invention  claimed,  102.     Sft  below 
must  be  accompanied  by  draw  in^s  if  r-  • 

intKt  particularly  describe  and  ascertain  nature  of  in\>  ntii.n,  and 
in  \\liut  manner  to  be  performe«i 
which  invention  must  be  substantially  same  aa  that  dew 

in  provisional  specification,  I'1"- 
•  >n  of.  to  provisional  specification,  107 
may  drop  some  features  >  :  ,il  specification,  107 

within  certain  limit-. 
must  not  materially  add  to,  or  deviate  from,  invention  in  pro 

nal  specificatioi: 
but  developments  within  its  scope  allowed,  108,  109 

if  invented  since,  1 11 

provisional  specification  may  not  be  read  to  supply  defect  in,  1 1  - 
.tration  of,  rules  to  be  observed  in,  1 1  -.  388 

security  of  patentee's  privileges  lar.  is  on  shape  of,  100 

imrmi<>n  as  described  in,  mu.-t  fall  within  title,  111 
good  faith  must  be  observed,  and  full  disclosure  of  invention  made, 

112 
definition  of  invention  to  be  accurate,  that  reader  may  understand 

of  what  it  consists,  11'-' 
when  patent  is  for  improvements  on  earlier  patent,  they  must  be 

clearly  distinguished,  113 
if  invention  is  partly  communicated  from  abroad,  this  should  be 

distinguished,  113 

where  invention  imported,  if  specification  in  fact  insufficient,  it  i  - 
no  an  swer  that  patentee  has  stated  all  that  was  communicated 
to  him  from  abroad,  1 1  I 


INDEX  531 

SPECIFICATION,  COMPLETE--  continued 

but  if  sufficient,  it  is  no  objection  that  foreign  inventor  pos- 
sessed information  not  set  forth,  114 

must  fully  describe  the  means  of  carrying  the  invention  into  effect, 
114 

description  must  not  be  vague  and  general,  117 
must  precisely  describe  all  materials  and  ingredients,  118 
must  describe  the  best  method  of  operating,  121 
must  communicate  the  latest  information,  110,  123 
need  not  set  forth  every  application,  125 
must  be  intelligible  to  workmen  of  ordinary  skill,  125 
combinations,  131 

must  point  out  the  novelty  otherwise  than  by  general  descrip- 
tion, 131 

limits  of  this  rule,  132 

all  parts  old— only  combination  should  be  claimed,  143 
ambiguity  to  be  eschewed,  135 

must  not  set  forth  two  methods  when  only  one  is  effective,  136,  148 
must  not  contain  misdirections  or  misrepresentations,  137 
technical  and  scientific  terms,  139 
simple  mistakes,  139 

must  end  with  distinct  statement  of  invention  claimed,  140.     See 
belmv,  CLAIMS  IN 

this  requirement  only  directory,  141  • 

claims  in,  140 

large  number  of,  dangerous,  141 

everything  not  claimed  is  impliedly  disclaimed,  141 

ought  to  show  clearly  what  is  claimed,  142 

but  not  intended  to  aid  the  description,  143 
if  all  the  parts  old,  only  combination  should  be  claimed,  143 
new  parts  and  minor  combinations  must  be  expressly  claimed,  145 
must  not  cover  too  much,  145 
vague,  speculative  claims  to  be  avoided,  149 
drawings  in,  106.     See  DRAWINGS 
interpretation  of,  152.     See  CONSTRUCTION 
amendment  of,  178.     See  AMENDMENT  OF  SPECIFICATION 

SPECIFICATION,  PROVISIONAL,  94 

to  accompany  application  for  patent  unless  complete  specification  does, 
94 

must  describe  nature  of  invention,  94 

must  be  accompanied  by  drawings  if  required,  94 

must  begin  with  title,  94 

ought  not  to  comprise  more  than  one  invention,  94,  96 
if  it  does,  may  be  amended,  94 
and  separate  patents  had  for  other  inventions,  94 

examiner  to  report  on,  95 

comptroller  may  require  amendment  of,  95 

but  applicant  may  appeal  to  law  officer,  95 

acceptance  of,  how  notified,  95 

after  acceptance  of,  invention  may  be  used  and  published  without  pre- 
judice to  patent,  99 

general  description  of  invention  enough  for,  97,  98 

office  of,  97,  98 

may  be  abandoned  and  another  lodged,  98 

its  relation  to  complete  specification,  107 

form  of,  396 

cases  on,  96-98 

ST.  HELENA, 

patent  laws  of,  493 


4f  *  47  Vic 


KM 


L8M 


Ml 

,870 


51  A  52  Vic.  c.  50  (1888 

8num  SETTLEMFXTH, 
patent  laws  of,  494 

SUBJECT-MATTER   OF   LKTTEM    PATTST.  5-80. 

must  be  tome  '  manner  of  new  manufacture*,'  6 

vide  interpretation  of  these  words.  :, 
bare  principles  are  not,  6.    8ft  PvnciruM 
genera!  principles  applied  to  a  manufacture  for  the  first  time,  10 
manufacture  of  old  substance  by  new  process,  12.  14 
new  contrivances  applied  to  new  objects  or  purposes.  1 1 
new  contrivance  to  effect  old  object,  14 

known  purpose  effected  by  new  materials,  15 

direct  instead  of  indirect  method  of  making  known  prodor 
new  combination  of  known  parts  or  old  processes  pro 
result,  15.  70 

or  an  old  result  more  economically  or  more  perfectly,  15,  70 
new  shape  of  old  elements  of  old  combination  invoking  physical  law 

otherwise  left  on  one  side,  16,  70,  71 
new  mode  of  applying  a  known  thing  where  novelty  in  application,  16. 

'M'lvW,  AlTLlCATIOXa 

chemical  processes,  sometimes  in  combination  with  mechanical  con- 
trivances, ID 
production  as  a  merchantable  commodity  of  substance  already  produced 

in  laboratories  as  a  chemical  curiosity,  20 
applications,  76 

application  of  known  machines  to  analogous  purpose,  77,  80 

unless  application  is  out  of  the  track  of  the  former  use  and 

requires  invention,  82 
application  of  known  article  to  produce  another  known  article,  78 

or  of  new  material  to  produce  known  article,  78 
rule  as  to  applications  docs  not  necessarily  apply  to  chemical 
oases,  84 

of  better  mode  of  using  known  machines  not  sufficient. 
7-J.  71 
nor  mere  combination  of  two  old  apparatus,  means  of  combination 

being  obvious.  7  > 
nor  mere  substitution  of  one  material  for  another  in  a  known 

article,  76,  81 
improvements  on  invention  subject  of  existing  patent,  85 

- 

patent  laws  of,  462 

patent  laws  of,  463 

patent  laws  of,  495 
TKKM  or  PATENT,  171 

THBKATS  or  LEGAL  PKOCEK 

may  be  restrained  if  action  not  brought,  303.     Sec  ACTIOX  TO  KK.-,TRAJV 
THREATS 


INDEX  533 

TITLE  OF  PATENT,  90 

specification  (provisional  and  complete)  must  begin  with,  89 

to  be  reported  on  by  examiners,  89 

what  it  is,  90 

Comptroller  may  require  amendment  of,  89 

directions  as  to  and  illustrations  of,  90 

invention  and  specification  must  fall  within,  90,  111 

title  and  specification  read  together,  93 

cases  on  91-93 

TRANSVAAL. 

patent  laws  of,  464 

TKINIDAD, 

patent  laws  of,  496 

TKUE  AND  FIRST  INVENTOR.     See  INVENTOR 
cases  on,  29-33 

TRUSTS, 

not  to  be  entered  in  registers,  229 

TRUSTEE, 

where  rival  inventors,  patent  may  be  vested  in,  164 
rights  of  parties  where  patent  vested  in,  177 
of  bankrupt  patentee,  patent  vests  in,  218 

and  he  may  sue  for  infringements,  218 

rights  of  assignee  from,  219 

TUNIS, 

patent  laws  of,  466 

TURKEY, 

patent  laws  of,  467 

UNITED  STATES  OF  AMERICA, 
patent  laws  of,  421 

URUGUAY, 

patent  laws  of,  468 

USER,  PRIOR.     See  PUBLICATION 
what  will  avoid  patent,  34-36 
prior  to  application  by  inventor,  34-36 

in  colony  does  not  affect  patent  subsequently  obtained  for  same  inven- 
tion in  United  Kingdom,  44 
meaning  of  '  public  use,'  38 
user  in  public  avoids  patent,  34,  36,  37 

manufacture  and  sale  of  article,  35,  40,  59 
even  if  to  be  sent  abroad,  39 

public  exhibition  of  article,  38 

sale  of  articles  made  abroad,  44 

actual  sale  not  necessary  if  article  in  public  use,  42,  44 

need  not  be  continuous  up  to  date  of  patent  to  avoid  patent,  45 
mere  experimental,  does  not  avoid  patent,  36,  46-49  / 

nor  prior  imperfect  machine  for  same  object,  49,  50 
secret  user  by  inventor,  43-45 

confidential  communications,  60 
under  provisional  protection  obtained  in  fraud  of  true  inventor,  45 

UTILITY, 

necessary  incident  of  patentable  invention,  21 
'  does  not  mean  abstract  utility,'  22 
patent  for  useless  invention  void,  21 


HMB 

ntinufd 

also  if  a  material  part  U  osele* 
but  UM!«MII«M  of  part  will  not  vitiate  the  patent  onleM  that  |«rt  i» 

!.      •  .•  •   i    .    •          •    .     .  i 
a  question  for  a  jury,  23 
slightest  amount  of,  is  sufficient,  28,  96 
most  be  in  invention,  not  merely  in  the  thing  produced.  18 
improvement  in  trade,  in  consequence  of  invention,  good  tart,  24 
public  use  of  invention,  a  test  . 
patent  for  an  invention  not  commercially  useful  is  not  naeamrily 

bad. 

quantity  of,  not  important,  23 
invention  not  meeting  with  public  acceptance  U  ton*  preemption 

against  its,  25 

most  be  judged  by  reference  to  state  of  things  at  date  of  patent,  25 
that  invention  is  not  worked  by  inventor  U  primd-facic  evidence  of 

want  of.  26 
cases  on,  21-26 

ITT  or  LETTERS  Pmtsrr, 
requisites  to,  4 
certificate  in  action  for  infringement  that  the,  came  in  question,  800 

\  .  •• } ./: '}  I.  v, 

patent  laws  of 

VCSSBXR,  FORE  i 

use  of  invention  in,  in  British  water 

VICTORIA, 

patent  laws  of 

WAR,  SECRETARY  FOR, 

empowered  to  purchase  inventions  for  munitions  of  war,  175,  351 

KS    ACSTRAIJA, 

patent  laws  of,  500 

\v  ma  v 

suggestions  and  assistance  of,  will  not  invalidate  a  patent,  38 


•roTTiawooii). 

IMMM 


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